Darrin Auito | December 2, 2015
Straight Path IP Group, Inc., v. Sipnet EU S.R.O.
November 25, 2015
CAFC Panel and opinion author: Before Dyk, Taranto, and Hughes. Opinion for the court filed by Taranto. Opinion concurring in part and dissenting in part filed by Dyk.
Summary: In an appeal from an Inter Partes Review, the CAFC reversed the Board’s decision cancelling claims 1-7 and 32-42 based on determinations of anticipation and obviousness, and remanded for further proceedings under a new claim construction.
Straight Path IP Group, Inc. (Straight Path) owns U.S. Patent No. 6,108,704, (“the ‘704 patent”) which describes protocols for establishing communication links through a network.
Sipnet EU S.R.O. (Sipnet) filed a petition for inter partes review against the ‘704 patent, and the PTAB instituted a review. Straight Path contended that the relevant prior art references (NetBIOS and WINS) do not read on the patent claims because the claims require a real-time check, which is not disclosed by the references. Relying on the specification, which indicates that the database only need be “relatively current,” (col. 5, lines 39-42) the PTAB rejected this construction and determined that according to the broadest reasonable interpretation (BRI standard) in light of the specification (1) claims 1-7 and 32, and 38-42 are anticipated by NetBIOS, (2) claims 1-7 and 32-42 are anticipated by WINS, and (3) claims 33-37 are obvious over NetBIOS and WINS. Sipnet EU S.R.O. v. Straight Path IP Group, Inc. (IPR2013-00246). The PTAB adopted Signet’s view under the BRI standard in view of the specification, namely that “is connected to the computer network encompasses a processing unit that is ‘active and on-line at registration” and reached its conclusion in part because Straight Path agreed that the second process was “active and on-line” at least at registration in both NetBIOS and WINS.
Claim 1 is representative of the asserted claims (emphasis added to highlight the key claim phrase at issue):
1. A computer program product for use with a computer system, the computer system executing a first process and operatively connectable to a second process and a server over a computer network, the computer program product comprising:
a computer usable medium having program code embodied in the medium, the program code comprising:
program code for transmitting to the server a network protocol address received by the first process following connection to the computer network;
program code for transmitting, to the server, a query as to whether the second process is connected to the computer network;
program code for receiving a network protocol address of the second process from the server, when the second process is connected to the computer network; and
program code, responsive to the network protocol address of the second process, for establishing a point-to-point communication link between the first process and the second process over the computer network.
On appeal, the patentability issues ultimately depend on the construction of the term “is connected to the network.”
a. The CAFC reversed the PTAB’s cancellation of the challenged claims and remanded for further proceedings based on a new claim construction
In a 2-1 decision, a majority seized on the present tense meaning of “is” in the claim language and held that the PTAB’s construction of the disputed phrase “is not a reasonable interpretation of the claim language, considering its plain and ordinary meaning.”
According to the majority, “the query required by the claim language asks if the callee ‘is’ online, which is a question about the status at the time of the query. But the [PTAB] did not address the facially clear meaning, instead turning immediately to the specification.” The majority highlighted that in this situation, “the specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant aspects.” Regardless, the majority stated that the specification does not provide a basis for reasonably adopting a construction that contradicts the plain meaning of the claim language (i.e., passage relied upon by PTAB says nothing more than that the unit is active and online – available for communication – at the time it registers.) The majority also jumped on an exchange at oral argument wherein Sipnet’s counsel agreed that “[w]hen somebody registers, that registration means, right then and there, they’re active and online” and “[t]hat could be out of date (a day later)”. The majority also emphasized that “the plain meaning is positively confirmed by the prosecution history, which we have indicated is to be consulted even in determining a claim’s broadest reasonable interpretation.” The majority cited arguments made by Straight Path to overcome a rejection during reexamination (e.g., “NetBIOS does not teach that an active name in NetBIOS is synonymous with ‘whether the second process is connected to the computer network.’”)
Sipnet’s attempt to challenge the claim language for not adequately describing or enabling the systems or processes involving a query about current connection status under Straight Path’s claim construction was rejected by the majority, which pointed out that the statute limits IPR challenges to prior-art, not written-description and enablement. 35 U.S.C. 311(b).
Straight Path’s challenge that PTAB failed to construe “process” was rejected because it did not preserve that contention, e.g., did not request construction in its preliminary response, in its response after the PTAB initiated review, or at the oral hearing before the PTAB.
The majority therefore remanded this case to the PTAB in order to apply the construction – “is connected to the computer network at the time the query is transmitted to the server” – in considering the prior art, including NetBIOS and WINS.
b. Dissent – The word “is” does not require “absolute currency”
In a separate opinion, J. Dyk dissented from the majority’s claim construction of the term “is connected to the computer network” to require absolute currency in a real-time assessment of connectivity.
First, using the following hypothetical example, J. Dyk argued that ordinary usage easily accommodates the Board’s interpretation of “is connected.”
“If a person says that ‘John is at home,’ this might lead to the question: ‘How do you know?’ The response ‘I spoke to him five minutes ago’ would not be viewed as contradicting the original statement, even though John might have left home in the intervening five minutes. In other words, the use of the word ‘is’ does not necessarily imply absolute accuracy or absolute currency.”
J. Dyk continued by attacking the majority for minimizing the role of the specification during claim construction. “[U]nder the Phillips approach, we must look to the specification as the ‘single best guide to the meaning of a disputed term.’ This is true, contrary to the majority’s assertion, even in cases were language, on its face, appears to have a plain meaning, because, as Phillips states, the specification ‘is always highly relevant to the claim construction analysis.’” (emphasis added).
J. Dyk points out that the specification “describes that, when a query is received, the server ‘searches the database … to determine whether the callee is logged-in by finding any stored information corresponding’ to that queried user” (emphasis added) … and that “[t]his information in the database, as described in the specification, is kept ‘relatively current.” According to J. Dyk, checking historical “relatively current” information in a database is not a “real time” determination and that there is no disclosure in the specification that would warrant construing “is connected” to require absolute accuracy, as required by the majority.
Lastly, J. Dyk argued that the majority’s insistence that “is” requires absolute currency is contrary to this Court’s prior decision in Paragon Solutions, LLC v. Timex Corp 566 F.3d 1075 (CAFC 2009), holding that a reference to “real time” does not necessarily require absolute currency.
• The PTAB will interpret claims of an unexpired patent using the broadest reasonable interpretation (BRI) in light of the specification. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); 37 CFR 42.100(b); In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1279 (CAFC 2015).
• The BRI standard does not apply to expired patents (e.g., when a patent term expires during the PTO-litigation proceeding). Instead, the claim construction standard moves to a standard “pursuant to the principle set forth by the court in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (words ‘are generally given their ordinary and customary meaning’ as understood by a person of ordinary skill in the art in question at the time of the invention)” [MPEP §2258.I.G].
• Consider advancing claim constructions under the BRI standard and the Phillips standard if there is a chance that a patent in a PTO-litigation proceeding will expire before the end of the proceeding.
• Typical assumption – The Phillips standard results in a narrower construction than the BRI standard. However, in this case, both the majority and dissent concluded there is “no significant difference between the Phillips and BRI standards.”
• Always be prepared to answer questions at oral hearing (CAFC and PTAB). Here, the majority seized on an exchange between Sipnet’s counsel and the Court to support its claim construction position.
• A Final Written Determination is not necessarily final. The CAFC has reversed two PTAB decisions invalidating claims, in addition to reversing other PTAB decisions validating claims.
• Claim drafting – Words matter. Tense matters. Recognize the significance.