In Liberty Ammunition, Inc., v. U.S., [2015-5057, 2015-5061] (August 30, 2016), the Federal Circuit reversed the Court of Claims decision that that ammunition rounds used by the United States Army embody the claims of Liberty Ammunition, Inc.’s U.S. Patent No. 7,748,325 without authorization, violating 28 U.S.C. § 1498.

At issue was the construction of the term “reduced area of contact” in a claim for an improved bullet.  The Federal Circuit said there are no clues within the claim itself as to what the area of contact has been reduced from, but found that the specification saves the term from indefiniteness, explaining that the projectile has “a reduced contact area as compared to conventional projectiles.  This raised the question, “what constitutes a conventional projectile?”  The Federal Circuit again found the answer in the specification: the M855 round, the only conventional projectile mentioned in the specification.  The Federal Circuit allowed that contact area was dependent on size, so the Federal Circuit broadened the corresponding caliber NATO standard-issue round as of October 21, 2005.

The Federal Circuit criticized the Court of Claims’ construction, which did not tie the reduced area to the NATO rounds.  The Federal Circuit further observed that would not be definite had the trial court’s construction been correct because there would not be a sufficient objective boundary around the term of degree “reduced area of contact.”  The Federal Circuit said a term of degree fails to provide sufficient notice of its scope if it
depends on the unpredictable vagaries of any one person’s opinion.

The Federal Circuit also rejected the Court of Claims’ construction of “intermediate opposite ends,” which because it was lead by the term “including” the Court of Claims found could extend to the ends.  The Federal Circuit has many times warned against using terms such as “comprising,” or “including,” as “weasel word[s] with which to
abrogate claim limitations.”  The Federal Circuit noted that the Court of Claims’ construction goes against these admonitions and significantly diminishes the “intermediate opposite ends” limitation, almost to the point of rendering it a nullity.

Because the accused Army rounds meet neither the “intermediate opposite ends” limitation nor the “reduced area of conduct” limitation—one of which appears in all
asserted claims—we hold that the Government has not violated Liberty’s patent rights under § 1498.

In WI-LAN USA, INC., v. Apple Inc., [2015-1256] (August 1, 2016) the Federal Circuit affirmed summary judgment of noninfringement of U.S. Patent Nos. 8,311,040 and 8,315,640.  At issue on appeal were two issues of claim construction: “specified connection” in the ‘040 patent, and “UL connection” in the ‘640 patent.

The parties disputed whether the term “specified connection” excludes embodiments where an intermediary device can maintain only one specified connection. The Federal Circuit found the claims inconclusive, and turned to the specification, whose consistent descriptions of multiple specified connections, suggested that the patent’s claims do not encompass an embodiment contrary to these descriptions.   The Federal Circuit said that consistent use of a term in a particular way in the specification can inform the proper construction of that term. Here, the Federal Circuit found that the specification’s consistent references to multiple “specified connections” to weigh in favor of a construction excluding embodiments where the intermediary node is
capable of maintaining only one “specified connection.”  The Federal Circuit also noted that the claims discussed allocating bandwidth, which suggested multiple connections over which the bandwidth is distributed.

The parties disputed the whether the term UL connection meant a connection between a user device and its intermediary node or the connection between an intermediary node and its base station.  The Federal Circuit found that the specification never
used the term “UL connections.”  Turning to the specification as a whole, the Federal Circuit found that the context required it to construe UL connection to refer to the intermediary node’s connections with user devices, not the base station, for three reasons.  IT was the only construction that squared with: (1) the scheme the patent sets out where the base station allocates bandwidth to its intermediary-node connections and the intermediary nodes allocate bandwidth to their user connections, (2) the network architecture the specification describes, and (3) representations Wi-LAN made in prosecution.

Because it affirmed both constructions against Wi-LAN’s challenges, the Federal Circuit also affirmed the district court’s grant of summary judgment of noninfringement.

in GPNE Corp. v. Apple Inc., [2015-1825] (August 1, 2016), the Federal Circuit affirmed the district court’s determination of noninfringement of  U.S. Patent Nos. 7,570,954 and  7,792,492, relating to a two-way paging system.

The focus was on the construction of the term node, which aside from the claims, was only used in the abstract.  The Federal Circuit began by noting that the only meaning that matters in claim construction is the meaning in the context of the patent.  The Federal Circuit noted that when a patent repeatedly and consistently” characterizes a claim term in a particular way, it is proper to construe the claim term in accordance
with that characterization.  The Federal Circuit also relied upon the prosecution history citing the way the “invention” was consistently and exclusively described in the inventor’s Rule 131 declaration.  The patent owner’s arguments about claim differentiation were rejected because of the consistent usages in the specification and the prosecution history.

The Federal Circuit also found it proper to require that the node “operates independently of a telephone network,” even though it was derived from a “single summation sentence” from the specification. However, this sentence read:

Thus, the invention provides a two-way paging system which operates independently from a telephone system for wireless data communication between users.

The Federal Circuit noted that when a patent describes the features of the “present invention” as a whole, this description limits the scope of the invention.

The Federal Circuit also rejected the patent owner’s complaint that the district court should have construed the term “pager,” stating that where a district court has resolved the questions about claim scope that were raised by the parties, it is under no obligation to address other potential ambiguities that have no bearing on the operative scope of the claim.  A court need not attempt the impossible task of resolving all questions of meaning with absolute, univocal finality.  Only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.  This is because “[s]uch an endeavor could proceed ad infinitum, as every word—whether a claim term itself, or the words a court uses to construe a claim term—is susceptible to further definition, elucidation, and explanation.”

The Federal Circuit affirmed the jury verdict of no infringement.

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In SkyHawke Technologies, LLC v, Deca International Corp., [2016-1325, 2016,1326] (July 15, 2015), the Federal Circuit granted Deca’s motion to dismiss SkyHawke’s appeal of a PTAB Decision in a reexamination on the grounds that SkwHawke was the prevailing party.

Even though SkyHawke “won” the reexamination, SkyHawke did not like the PTAB’s construction of its claim, and wanted the Federal Circuit to correct the PTABs’ claim construction.  The Federal Circuit observed that Courts of appeals employ a prudential rule that the prevailing party in a lower tribunal cannot ordinarily seek relief in the appellate court.  Even if the prevailing party alleges some adverse impact from the lower tribunal’s opinions or rulings leading to an ultimately favorable judgment, the matter is generally not proper for review.

The Federal Circuit found that SkyHawke’s appeal fits cleanly into this prudential prohibition. The Federal Circuit noted that the PTAB’s decision is not issue-preclusive precisely because SkyHawke cannot appeal it.

The Federal Circuit said that SkyHawke will have the opportunity to argue its preferred claim construction to the district court, and SkyHawke can appeal an unfavorable claim construction should that situation arise. With the present appeal, SkyHawke is merely trying to preempt an unfavorable outcome that may or may not arise in the future and, if it does arise, is readily appealable at that time. Therefore,  the Federal Circuit found no reason to deviate from the standard rule counseling against our review of prevailing party appeals.

In Indacon, Inc. v, Facebook, Inc., [2015-1129] (June 6, 2016), the Federal Circuit affirmed the district court’s claim construction, leaving intact the parties stipulation of non-infringement based upon that construction.

At issues was U.S. Patent No. 6,834,276, claiming a system for replacing link terms with links.  Facebook argued that the claims of the patent required all of the link terms with links, while Indacon argued that the claims did not require replacement of all of the link terms.

The Federal Circuit began with the observation that “link term” these terms had no plain or established meaning to one of ordinary skill in the art, and as, they ordinarily
cannot be construed broader than the disclosure in the specification.  The Federal Circuit then noted that the specification explains that “[t]he link module
enables association of any selected link term with any of the plurality of files in the selectable database.” Which the Federal Circuit took to mean all of the selected link terms, and then pointed out in the specification, language that it found reinforced the idea that all of the link terms were replaced.

The nail in the coffin, however, was the “additional support” the Federal Circuit found in the prosecution history, where the patent owner argued that

Applicants’ invention provides a user with a linking
control panel in which the user can designate
a specific file to be linked with every instance of a
specified word (and any associated alias terms) in
the database. After the index is generated, the
program displays every instance of that custom
term (and its alias terms, if any) as a hyperlink to
the designated file. . . . These innovations distinguish
Applicants’ invention from [the prior art].

Indacon argued that because the references to “every instance” in the prosecution history were not the “critical contrast that applicants were trying to make over the cited reference,” these statements cannot form the basis for disavowal.  However the Federal Circuit did not need to make a finding of disavowal, given the fact that the link claim terms lacked a plain or ordinary meaning in the art, and because the specification suggested limiting the scope of these claim terms to allowing each instance of a defined term to be identified and displayed as a link.  Indacon’s attempts to use claim differentiation were also rejected because the claims were not otherwise identical in scope, and in any event, it “cannot enlarge the meaning of a claim beyond that
which is supported by the patent documents.”

In Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, [2015-1425, 2015-1438] (May 31, 2016), the Federal Circuit agreed that the claim term “communications path” did not include wireless communications paths, in part because the title of the patents referenced “Telephone Lines.”  The Federal Circuit pointed to its past use of title to construe claims: Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1557 (Fed. Cir. 1995); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 780 (Fed. Cir. 1985).

However, in Pitney Bowes Inc. v. Hewlett-Packard Company, —F.2d. — (Fed. Cir. 1999), the Federal Circuit was critical of the district court’s use of the title (and in particular the Examiner’s amendment of the title during prosecution) in construing the claims.  The Federal Circuit said that the purpose of the title is not to demarcate the precise boundaries of the claimed invention but rather to provide a useful reference tool for future classification purposes, and quipped “if we do not read limitations into the claims from the specification that are not found in the claims themselves, then we certainly will not read limitations into the claims from the patent title.”

The Federal Circuit went on, saying: “[t]he near irrelevancy of the patent title to claim construction is further demonstrated by the dearth of case law in which the patent title has been used as an aid to claim construction.” The Federal Circuit could only find one case the Exxon Chemical case it cited today in Ruckus Wireless.  The Federal Circuit found that the fact that “the patent title has only been mentioned once by this court in the context of claim construction and, even then, merely to make an illustrative point in one sentence, makes a powerful statement as to the unimportance of a patent’s title to claim construction.”

The patent’s title is used in claim construction, but it should not be the primary source of understanding the claim language.

In David Netzer Consulting Engineer LLC, v. Shell Oil Company, [2015-2086] (May 27, 2016), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent 6,677,496 on a process for the coproduction of ethylene and purified benzene.

At issue was the meaning of the term “fractionating” in the claims.  The Federal Circuit noted that the district court did not make any factual findings to support its claim construction, but found that because the intrinsic record alone determines the proper construction in this case, it was able to conduct its review adequately, de novo.

Claim terms are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art at the time of the invention.  Because that meaning is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to the intrinsic record, including “the words of the claims themselves, the remainder of the specification, the prosecution history, as well as to extrinsic evidence when appropriate, to construe a disputed claim term.

The patent owner argued that fractionizing simply meant separating, but the Federal Circuit disagreed, finding that fractionating means separating compounds based on differences in boiling points.  The Federal Circuit noted that the specification repeatedly and consistently uses “fractionating” or “fractionation” to describe separating petrochemicals based on boiling point differentials. Moreover, the Federal Circuit noted, the patentee made clear and unmistakable statements in the intrinsic record, distinguishing the claimed invention from and disclaiming conventional extraction.

The Federal Circuit also rejected conflicting extrinsic evidence cited by the parties, explaining that extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of the intrinsic record.

Having affirmed the claim construction, the Federal Circuit likewise affirmed summary judgment of noninfringement, adding that disclaimer applied to both literal infringement and to infringement under the doctrine of equivalents.