Claim Construction : CAFC Alert

Definitional Language In The Specification May Be Fully Determinative Of Claim Construction

| December 9, 2015

CardSoft, LLC v. VeriFone, Inc.

December 2, 2015

CAFC Panel and opinion author: Prost, Taranto, and Hughes, Opinion by Hughes


On remand from the Supreme Court, the Federal Circuit again reverses the district court’s construction of the term “virtual machine” and gives “virtual machine” its ordinary and customary meaning, resulting in a judgment of no infringement.

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Tense Decision: CAFC Reverses PTAB Decision Based on the Meaning of the Word “Is”

| 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.


I.  Background

 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.”

II.  Decision

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.

Take Away

• 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.

Full Opinion

U.S. Patent 6108704

Once again, the plain meaning controls.

| May 9, 2014

GE Lighting Solutions, LLC v. AgiLight, Inc.

May 2, 2014

Panel: Rader (Chief Judge), Moore (Author), and Reyna

Appeal from U.S. District Court for the Northern District of Ohio.


GE Lighting Solutions, LLC (GE) appealed the district court’s grant of summary judgment that AgiLight, Inc.’s (AgiLight) accused products and processes do not infringe asserted claims of GE’s U.S. Patent Nos. 7,160,140, 7,520,771, 7,832,896, and 7,633,055.  The issues mostly involved claim construction.  After resolving the claim construction issues, the CAFC reversed and remanded the grant of summary judgment with regard to the ’140, ’771 and ’896 patents and affirmed the grant of summary judgment with regard to the ’055 patent.
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There must be a Clear and Compelling Reason to Construe a Claim Term in a Way Other than its Ordinary Meaning

| March 19, 2014

Ancora Technologies v. Apple

Decided March 3, 2014

Before Chief Judge RADER, Circuit Judges TARANTO and CHEN. Opinion by Circuit Judge TARANTO.


Ancora stipulated that its patent was not infringed by Apple’s iOS operating system, in view of the trial judge’s narrow construction of the term “program” in Ancora’s patent claims.  Ancora appealed the judge’s claim construction.  Apple cross-appealed the judge’s construction of two other claim terms, “volatile memory” and “non-volatile memory” in the context of the judge’s determination that the claim terms were not indefinite.

The CAFC agreed with Ancora on both issues and remanded the case to the lower court for further proceedings.


Ancora’s patent claimed a method for determining whether software on a computer is authorized, and if not, taking remedial action.  A significant feature of the claimed method is that encrypted license information is stored in the computer’s basic input/output system (BIOS), where that information is less vulnerable to hacking than when stored in other types of memory space, as in the prior art. 

Representative claim 1 recited

A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:

selecting a program residing in the volatile memory,

using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,

verifying the program using at least the verification structure from the erasable nonvolatile memory of the BIOS, and

acting on the program according to the verification.

Apple argued, and the trial judge agreed, that in view of the specification and the prosecution history, the claim term “program” would be understood by one skilled in the art as “an application program,” i.e., a program that relies on an operating system to run but is not itself an operating system, specifically “a set of instructions for software application that can be executed by a computer.”   


The CAFC recited the principle of law that each claim term is given ordinary meaning in the context of the claimed invention, unless the applicant has clearly adopted a different meaning or clearly disclaimed the literal scope of the claim.  Here, one in the art would understand that “program” in the context of computers include application programs and operating systems that run application programs, plus other types of programs.  They are not limited to application programs.

Further, the recitation of “application software program” in another claim in the asserted patent suggests that the applicants did not intend the bare term “program” in representative claim 1 to have the same meaning.   

The specification refers to the programs to be verified as “software programs,” “software” and “programs” without limiting them to application programs.  Examples in the specification do refer to “application programs,” but they are non-limiting examples. 

Apple’s reliance on applicants’ statements during prosecution of the patent were also unpersuasive. Those arguments distinguishing prior art, “concerned software that implemented the invented method. The to-be verified software is different from the verifying software. The statements from the prosecution history on which Apple relies do not say that the program being verified must be an application program.” (Emphasis added).   

The CAFC also affirmed the trial judge’s rejection of Apple’s defense that the claims were indefinite because of the claim phrases “volatile memory” and “non-volatile memory.”  The CAFC began by noting the agreement among the parties and the lower court that the phrases are well-understood in the art: “to one of ordinary skill in the art, a volatile memory is memory whose data is not maintained when the power is removed and a non-volatile memory is memory whose data is maintained when the power is removed.” 

The CAFC acknowledged certain “loose wording” in the specification regarding these phrases, but the panel found that “the terms at issue have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification. There is no facial ambiguity or obscurity in the claim term. Moreover, the specification nowhere purports to set out a definition for ‘volatile’ or ‘non-volatile’ memory, and nothing in it reads like a disclaimer of the clear ordinary meaning.” (Emphasis added). 


Of course, drafters need to be careful in their use of claim terminology.  Nonetheless, where claim terms are quite well understood in the relevant art, courts will not apply those terms in a manner contrary to their common understanding, unless the applicant clearly intended to redefine the term or clearly disclaimed a portion of the literal scope of the claim. 


| March 11, 2014

Tempo Lighting Inc. v. Tivoli, LLC.

 Decided February 10, 2014

 Before RADER, Chief Judge, MOORE, and WALLACH, Circuit Judges. Opinion by RADER.


Tivoli owns USP 6,554,446.  The ‘446 patent relates to a reflective strip of material that illuminates the edge of stair steps in low light situations.  Claim 1, for example, recites:

1.   A lighting apparatus comprising:

a first extruded portion shaped to mount on the nose of a stair step; and

a second extruded portion coextruded with said first portion and mounted on top of the first portion so as to be above the nose of the stair step, said second portion comprising a material inert to light and selected to have a reflectance factor greater than or equal to light gray polyvinyl chloride.

Tivoli sued Tempo for infringement of the ‘446 patent in February of 2004. Tempo responded by filing an inter partes reexamination against the ‘446 patent.  The USPTO issued the first Office Action in March of 2005.  Soon after that, the district court stayed the infringement suit pending the result of the reexamination.  The district court case remained stayed for over 8 years while the reexamination continued grinding its way through the USPTO.

Tempo filed sixty different proposed rejections in the reexamination.  The examiner adopted only five of the rejections.  The examiner provided a dictionary definition of the term, “inert to light.”  In May of 2009 the examiner closed prosecution, retaining his rejection of the claims, and Tivoli appealed the examiner’s rejection of the claims to the Board. 

The Board held that:

 1.   The examiner’s definition of “inert to light” was wrong and used the one based on the prosecution history, in which the term “inert to light” was “non-photoluminescent and not activated to glow by absorbing ambient light.”

2.   The rejection of claims 1-3 and 6-13 were improper.  The Board stated that the references did not show the feature of “inert to light.”

3.   Tempo had waived alternative arguments because it did not file a cross-appeal raising such arguments.

 Tempo appealed to the CAFC.

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In 6-4 en banc decision, Federal Circuit maintains no-deference review of District Courts’ claim constructions

| March 11, 2014

Lighting Ballast v. Philips Electronics (en banc, Precedential)

Decided February 21, 2014

Before NEWMAN, LOURIE, O’MALLEY.  Opinion by NEWMAN, Concurrence by LOURIE, Dissent by O’MALLEY.


In a patent dispute involving the interpretation of a “means-plus-function” term, a three-judge panel of the Federal Circuit revised the District Court’s claim construction on appeal and held the patent claim invalid for indefiniteness, in the absence of any structure in the description corresponding to the “means” recited in the claim.

The Federal Circuit granted rehearing of the panel decision by the full Court (“en banc”), for the purpose of revisiting its practice of reviewing claim construction without giving any deference to the District Court.  In a 6-4 decision, the Federal Circuit en banc maintains the plenary review (“de novo”) rule established by its 1998 decision Cybor Corp. v. FAS Technologies, Inc.

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Beware of Relying on a Single Example, Since It May Limit Claim Scope

| October 17, 2013

Sunovion Pharmaceuticals, Inc. v. Teva Pharmaceuticals, et al.

September 26, 2013

Panel:  Lourie, Schall and Reyna.  Opinion by Lourie


In this case arising from an ANDA, the claims recited the vague term of “essentially free of”, which was undefined by the specification.  Although probably never intended to limit the scope of the claims, the CAFC held that the content of the sole substantive example in the specification and a declaration citing this—which was heavily relied upon during prosecution—defined the scope of this ambiguous term.  However, the patent owner managed to win the litigation nonetheless, due to the CAFC recognizing the ineffectiveness of an unconventional “certification” of non-infringement to the district court which contradicted the defendant’s FDA filing.

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Incorporation by reference by its entirety without further relevant citation to specific contents is insufficient to provide intrinsic record to trump the disclaimer in the specification

| September 4, 2013

SkinMedica, Inc. v. Histogen Inc. et al.

August 23, 2013

Panel:  Rader, Clevenger, Prost.  Opinion by Prost.  Dissent by Rader.


SkinMedica owns the ’494 patent.  It filed a patent infringement suit against Histogen.  During the prosecution, the inventors limited their claimed inventions to pharmaceutical compositions comprising cell culture medium conditioned by animal cells cultured in three-dimensions.  The issue is whether the claimed term, “culturing … cells in three-dimensions,” covers the use of beads.  The ordinary meaning of the claimed term, “culturing … cells in three-dimensions” would cover the use of beads.  The court found that the inventors expressly defined the use of beads as culturing in two-dimensions.  Also, the inventors avoided anticipatory prior art during prosecution by asserting that the conditioned medium produced by two-dimensional cultures was inferior and chemically distinct from the conditioned medium produced by three dimensional cultures. SkinMedica also argued that the ’494 specification incorporates Doyle by reference, which explains the use of beads.  However, the court rejected this argument since specific reference to the relevant discussion is not made in the intrinsic record, which does not trump the disclaimer in the specification.

SkinMedica は494特許を所有しており、Histogen社を特許侵害で訴えた。494特許の審査段階において、出願人はクレーム発明を補正し、3次元培養に限定し た。争点は、クレーム発明がビーズの使用を含むかどうかである。クレーム用語である「細胞を3次元で培養する」の通常の意味は、ビーズの使用を含む。しか しながら、裁判所は、内部証拠から判断して、発明者が、ビーズの使用は2次元培養であることを明確に定義したと判断した。また、発明者は審査段階において 新規性拒絶をクリアするために2次元培養で製造した調整媒体は劣っており、3次元媒体で製造した調整媒体と化学的に区別できることを主張した、と判断し た。また、494特許は、ビーズの使用を説明した文献(Doyle)を明細書に引用していたが(incorporation by reference)、関連箇所を示す説明が何もないとして、SkinMedicaの主張を退けた。

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Disavowal of Claim Terms is a Stringent Hurdle to Overcome, which must be “Clear and Unmistakable” Disavowal to Limit the Scope of Claims

| August 14, 2013

Plantronics, Inc. v. Aliph, inc. and Aliphcom, Inc.

July 31, 2013

Panel:  Rader, O’Malley and Wallach.  Opinion by Wallach.


This is a patent infringement suit by Plantronics against Aliph.  Plantronics is owner of US Patent 5,712,453 (‘453 patent) entitled, “Concha Headset Stabilizer.”  This is a concha-type headset to anchor in a user’s ear for use in a telephone receiver.

The district court granted-in-part summary judgment for Aliph, for noninfringement and invalidity.  After appeal, the Federal Circuit reversed-in-part, vacated in part and remanded for further proceedings.  More specifically, the Federal Circuit reversed the summary judgment of noninfringement and invalidity.  The discussion below will focus on the issue of noninfringement.

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How to claim triangle relationships among three elements to win broader claim construction

| June 19, 2013

Douglas Dynamics LLC v. Buyers Products Co.

May 21, 2013

Panel:  Rader, Newman, and Mayer.  Opinion by Rader.  Dissent by Mayer.


Connection between two elements is relatively clear and does not cast heavy doubt.  Adding another element allows possible variations in connections among three elements and requires deeper thoughts of a claim drafter.  In this case, the CAFC reversed the district court’s narrower claim interpretation of “connected to” in light of its ordinary meaning and the usage in the specification.  Judge Mayer dissented from the majority’s claim construction.  Contexts of a claim are source for supporting specific claim interpretation.  A functional limitation supported a  favorable interpretation for patentee and saved a problematic structural limitation from a pitfall.

特許クレームは、3つの部品(フレーム)相互の接続関係を“connected to”という用語で定義した。クレームは、最初のフレームが3番目のフレームに直接接続されている態様だけに限定されるべきか、それとも2番目のフレームを介して間接的に接続されている態様も権利範囲に含まれるのかが争点となった。クレーム解釈の技法として、クレーム用語の通常の意味、明細書の実施形態の参酌に加えて、地裁およびCAFCともクレームの文脈に基づいて自身のクレーム解釈を正当化した。しかしながら、両者が認定した文脈には違いが存在する。地裁は構造的な限定に注目して解釈をし、CAFCは機能的な限定に鑑みて理由付けを行った。

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