Common Sense Still Applies In Claim Construction
| May 13, 2023
Alterwan, Inc. v Amazon.com Inc
Decided: March 13, 2023
Before Lourie, Dyk, Stoll (Opinion by Dyk)
Summary:
For a claim term “non-blocking bandwidth,” the district court accepted the applicant-as-his-own-lexicographer definition set forth in the specification to mean “a bandwidth that will always be available and will always be sufficient.” This meant that bandwidth must be available even when the Internet is down – which is impossible (and hence, the parties’ agreed-upon stipulation of non-infringement with this claim interpretation). Courts will not rewrite “unambiguous” claim language to cure such absurd positions or to sustain validity. But, when the claim language is “not unambiguous” concerning the disputed interpretation, common sense applies in claim construction, especially in view of the proper context for the source of the applicant-as-his-own-lexicographer definition.
Procedural History:
Alterwan sued Amazon for patent infringement. After a Markman hearing and motions for summary judgment by both parties, the district court changed the claim construction for “cooperating service provider” at a summary judgment hearing to be a “service provider that agrees to provide non-blocking bandwidth.” The district court construed “non-blocking bandwidth” to be “a bandwidth that will always be available and will always be sufficient” which meant that the bandwidth will be available even if the Internet is down. With this updated construction, the parties filed a stipulation and order of non-infringement of the patents-in-suit. Amazon argued, and the patentee agreed, that if the claim required bandwidth provision even when the Internet is down, Amazon could not possibly infringe. The district court entered the stipulated judgment of non-infringement and the parties appealed.
Decision:
Representative claim 1 is as follows:
An apparatus, comprising:
an interface to receive packets;
circuitry to identify those packets of the received packets corresponding to a set of one or more predetermined addresses, to identify a set of one or more transmission paths associated with the set of one or more predetermined addresses, and to select a specific transmission path from the set of one or more transmission paths; and
an interface to transmit the packets corresponding to the set of one or more predetermined addresses using the specific transmission path;
wherein
each transmission path of the set of one or more transmission paths is associated with a reserved, non-blocking bandwidth, and
the circuitry is to select the specific transmission path to be a transmission path from the [sic] set of one or more transmission paths that corresponds to a minimum link cost relative to each other transmission path in the set of one or more transmission paths.
The specification states “the quality of service problem that has plagued prior attempts is solved by providing non-blocking bandwidth (bandwidth that will always be available and will always be sufficient)…” (USP 8,595,478, col. 4, line 66 to col. 5, line 2). Accordingly, “non-blocking bandwidth” was defined by the applicant, acting as his own lexicographer, to mean “a bandwidth that will always be available and will always be sufficient.”
Normally, “[c]ourts may not redraft claims, whether to make them operable or to sustain validity” (citing, Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004)). In Chef America, the claim limitation “heating the resulting batter-coated dough to a temperature in the range of about 400°F to 850°F” would lead to an absurd result in that the dough would be burnt. Instead, the limitation would be made operable if it recited heating the dough “at” a temperature in the range of about 400°F to 850°F. However, since the limitation at issue was unambiguous, the court declined to rewrite the claim to replace the term “to” with “at.”
However, the court noted that, “[h]ere, the claim language itself does not unambiguously require bandwidth to be available even when the Internet is inoperable.” So, “Chef America does not require us to depart from common sense in claim construction.” Without “unambiguous” claim language requiring the disputed interpretation (“a bandwidth that will always be available and will always be sufficient”), the court proceeded to check the context for the support for the disputed interpretation. That “context” included specification discussion of wide area network technology that uses the internet as a backbone, and several “quality of service” problems that arise from the use of the internet as a backbone, including latency problems in the delays for critical transmission packets getting from a source to a destination over that internet backbone. The patent’s solution was to provide “preplanned high bandwidth, low hop-count routing paths” between sites that are geographically separated. These preplanned routing paths are a “key characteristic that all species within the genus of the invention will share.” It is after this discussion that the specification then concludes “[i]n other words, the quality of service problem that has plagued prior attempts is solved by providing non-blocking bandwidth (bandwidth that will always be available and will always be sufficient) and predefining routes for the ’private tunnel’ paths between points on the internet…”
Providing bandwidth even with the Internet being down is an impossibility. The specification describes operability and transmission over the Internet as a backbone and is completely silent about provision of bandwidth when the Internet is unavailable. In context, the definitional sentence for “non-blocking bandwidth” is addressing the problem of latency (when the Internet is operational), rather than providing for bandwidth even when there is no Internet. The court’s decision does not opine on what the meaning of non-blocking bandwidth is, but holds that “it does not require bandwidth when the Internet is down.”
Takeaways:
The court will not redraft claim language during claim construction to maintain operability or sustain validity when the claim language is unambiguous. But, when the claim language is “not unambiguous,” common sense applies, especially when looking at any source of the disputed interpretation in context.
