Entitled to Narrow Claim Construction

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.


Canons of Claim Construction to the Rescue

In Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, [2015-1425, 2015-1438] (May 31, 2016), the Federal Circuit affirmed the district court’s claim construction and resulting judgment of non-infringement.

At issue was whether U.S. Patent Nos. 5,912,895, 6,327,264, and 6,587,473 directed to for providing access to a local area network (LAN) from a relatively distant computer, and more particularly whether “communications path” is these patents was limited to wired paths, or whether communications path also included wireless paths.

The Federal Circuit first confirmed that the district court relied only on intrinsic evidence to construe the term “communications path,” and thus its review of that construction was de novo.

The Federal Circuit found no intrinsic or extrinsic evidence to support IWS’s
assumption that a person of ordinary skill at the time of invention would have understood the plain and ordinary meaning of “communications path” to include wireless communications.  The Federal Circuit observed:

  1. The title of the patents indicates that they are directed to “Communicating Information Packets Via Telephone Lines.”
  2. The specification describes “[t]his invention” as one “particularly
    concerned” with “two wire lines such as telephone
    subscriber lines.”
  3. Every embodiment described in the specification utilizes a telephone
    wire, and when the specification clarifies that the full breadth of the invention is not limited to the expressed embodiments, it declares only that the patents may also
    reach any wired connection.
  4. IWS did not present—nor did the district court consult—any extrinsic evidence, such as dictionaries, trade literature, expert testimony, or any other evidence showing that “communications path” was a term of art or otherwise understood to include wireless communications at the time of invention.

The Federal Circuit also found IWS’s claim differentiation arguments unpersuasive, because they did not necessarily broaden the independent claims to include wireless, as opposed to other forms of wired connections.

Finally, the Federal Circuit turned to the “canons” of claim construction, and in particular to the cannon that, “[i]f, after applying all other available tools of claim construction, a claim is ambiguous, it should be construed to preserve its validity.”  Applying this canon, the Federal Circuit noted that if the claims were not limited to wired communication paths, it would “would likely render the claims invalid for lack of written description.”  The Federal Circuit thus concluded that canon favoring constructions that preserve claim validity therefore counsels against construing “communications path” to include wireless communications.

The Federal Circuit thus affirmed the district court’s claim construction and its judgment of non-infringement.


Applicant Cannot Bypass the PTAB to get to Federal Circuit

In In re Arunachalam, [2016-1560] (May 27, 2016), the Federal Circuit dismissed  Arunachalam direct appeal to the Federal Circuit from the final rejection of his claims in prosecution following a new ground of rejection entered by the PTAB.

Under 28 U.S.C. § 1295(a)(4)(A), the Federal Circuit has exclusive jurisdiction over an appeal from a “decision” of the Board.  The Federal Circuit has held that § 1295(a)(4) should be read to incorporate a finality requirement.  Thus the Federal Circuit concluded that it lacked jurisdiction to hear a non-final appeal from the Patent Office.  Pursuant to § 134(b), Dr. Arunachalam may appeal the Examiner’s decision to the Board, and only after the Board issues a final decision can the Federal Circuit exercise jurisdiction to review the Board’s decision.

Consistent Usage and Disclaimer in Intrinsic Record Trump Anything in Extrinsic Record

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.

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

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.