Monthly Archives: August 2016

Detailed Analysis of Specification and Prosecution History Revealed Meaning of Claims

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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.

Information is Intangible, so Methods of Manipulating it are Abstract

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In Electric Power Group, LLC, v. Alstom S.A., [2015-1778] (August 1, 2016), the Federal Circuit affirmed summary judgment of invalidity of U.S. Patent Nos. 7,233,843, 8,060,259, and 8,401,710, on systems and methods for performing real-time performance monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data, and displaying the results.

The Federal Circuit noted that although lengthy and numerous, the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under §101.

The Federal Circuit began with the familiar two-step analysis, noting that a claim falls outside § 101 where (1) it is “directed to” a patent-ineligible concept, i.e., a law of nature, natural phenomenon, or abstract idea, and (2), if so, the particular elements of the claim, considered “both individually and ‘as an ordered combination,’” do not add
enough to “‘transform the nature of the claim’ into a patent-eligible application.”  The Federal Circuit said that the Supreme Court’s formulation makes clear that the first-stage filter is a meaningful one, sometimes ending the § 101 inquiry.  The Federal Circuit explained that the first-stage inquiry looks at the “focus” of the claims, their “‘character as a whole,’” and the second-stage inquiry (where reached) as looking more
precisely at what the claim elements add—specifically, whether, in the Supreme Court’s terms, they identify an “‘inventive concept’” in the application of the ineligible matter to which (by assumption at stage two) the claim is directed.

The Federal Circuit reasoned that information as such is an intangible, and thus collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.  In a
similar vein, the Federal Circuit said that it has treated analyzing information by
steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.  Finally, the Federal Circuit added that it has recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.

The Federal Circuit concluded that the claims are clearly focus on the combination
of abstract-idea processes.  The Federal Circuit distinguished the Enfish, which involved computer-functionality improvements, with the current case which uses existing computers as tools in aid of processes focused on “abstract ideas.”

Moving on to Step 2, the Federal Circuit noted that limiting the claims to the particular technological environment was not sufficient.  The Federal Circuit found nothing nothing significant to differentiate the claimed process from ordinary mental processes.  The Federal Circuit said that the claims do not require a new source or type of information, or new techniques for analyzing it.  As a result, they do not require an arguably inventive set of components or methods, such as measurement devices or techniques, that would generate new data. They do not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information—to provide a “humanly
comprehensible” amount of information useful for users, does not transform the otherwise-abstract processes of information collection and analysis.  The Federal Circuit also found that there was nothing in how the steps were accomplishes, because the claims did require any nonconventional computer, network, or display components, or even a “non-conventional and nongeneric arrangement of known, conventional pieces,” but merely call for performance of the claimed information collection, analysis, and display functions “on a set of generic computer components” and display devices.

The Federal Circuit concluded that nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.

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Repeated and Consistent Usage, including in Rule 131 Declaration, Defines Term

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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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