Fresh From the Bench: Precedential Patent Cases From the Federal Circuit
Straight Path - Straight Path owns a patent that describes certain protocols for establishing communication links through a network, including use of the Internet for telephone calls. On a petition for inter partesreview filed by Sipnet, a European telephone service provider, the PTAB cancelled claims based on anticipation and obviousness. A divided panel of the Circuit reverses the claim construction used by the Board and therefore reverses and remands the invalidity determinations. The majority feels the plain language of the claim supports a different construction than that adopted by the Board, whether or not the broadest reasonable interpretation standard is applied (as it is for PTO interpretations) or under principles expressed in Phillips (because the patent being examined is expired).
Here the plain meaning of the claim language must control, and the majority fails to find a redefinition or disavowal in the specification. The prosecution history also supports the majority's construction. Specifically, the majority rules that the use of the present tense "is" means that a claim involving the status of one computer refers to the present status of a second computer; that is, the question asked is whether the device "is" connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.
Because written-description and enablement challenges were not, and could not have been, part of the present inter partes review, the panel refuses to consider such arguments by Sipnet.
In dissent, Judge Dyk notes that the majority's insistence that "is" requires absolute currency fails to take account of a common usage of the term "is" and the Paragon Solutions decision holding that a reference to "real-time" does not necessarily require absolute currency. He also cites to the holding inPhillips that the specification "is always highly relevant to the claim construction analysis" and is "the single best guide to the meaning of a disputed term." Nonetheless, he agrees with the majority that the ruling on claim construction in this case is no different under the BRI or Phillips analysis.
Straight Path IP Group, Inc. v. Sipnet EU S.R.O.,Fed. Cir. Cases
2015-1212 (November 25, 2015)
The patent identifies a deficiency in what the prior art taught about real-time voice or video communications between two processing units over the Internet. According to the specification, the prior art disclosed successful protocols for such point-to-point communication between users and devices that maintained permanent network addresses. But for systems in which addressing is dynamic, i.e., in which devices obtain only temporary addresses on a network, point-to-point communications in realtime of voice and video have been generally difficult to attain. To solve the problem, the summary of the invention identifies a point-to-point Internet protocol that exchanges Internet Protocol IP addresses between processing units to establish a point-to-point communication link, based on the first unit's querying a connection server to determine the on-line status of a second unit.
In its petition for IPR, Sipnet cited several prior-art references, including "NetBIOS" and "WINS." The Board instituted IPR and cancelled the challenged claims based upon anticipation and obviousness.
The claim construction issue presented on appeal is whether the language "program code for transmitting, to the server, a query as to whether the second process is connected to computer network" refers, as Straight Path contends, to a present-tense status, or whether, as Sipnet contends, it simply requires being registered with the server. The Board adopted Sipnet's view as the broadest reasonable construction based on the specification: "connected to the computer network" encompasses a processing unit that is "active and on-line at registration." What the Board meant was that, to come within the query claim language, all the query from the first unit need do is request whatever the connection server has listed about a second unit's on-line status, even if the listed information is not accurate at the time of the query, i.e., even if it lists the second unit as online when, at that time, it is in fact not online.
Based on that construction, the Board concluded that claims 1-7, 32, and 38-42 were anticipated by NetBIOS, claims 1-7 and 32-42 were anticipated by WINS, and claims 33-37 were invalid for obviousness over NetBIOS and WINS. Straight Path appealed, challenging the claim construction just described and the resulting invalidity rulings, and arguing construction of the term "process" in the claims. Sipnet challenges the patent's compliance with written description and enablement requirements of section 112.
The Plain Language of the Claim Supports a Construction that "is" Limits Claim Coverage to the Current Condition
There being no dispute here about findings or evidence of facts extrinsic to the patent, we conduct a de novo review of the Board's determination of the broadest reasonable interpretation (BRI) of the claim language. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015). Straight Path notes that the patent has now expired and on that basis asks us to determine the governing construction under the principles of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), because the Board applies Phillips, rather than the BRI standard, for expired patents. In re Rambus, Inc., 753 F.3d 1253 (Fed. Cir. 2014). We need not explore the issues raised by that request, however, because we conclude that the Board adopted a claim construction that is erroneous even under the BRI standard.
We start with the claim language—which has a meaning that can only be called plain. The present tense "is" in "is connected to the computer network" plainly says that the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent. The question asked by the query is whether the device "is" connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language, considering its plain meaning, to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.
The Board said nothing that either recognizes or disputes the plain present-tense meaning of the claim language on its face. Indeed, the Board's construction "active and on-line at registration," implicitly recognizes that being online is a status that can change over time: having the status "at registration" is having it at a particular time. 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 Board did not address the facially clear meaning, instead turning immediately to the specification.
When claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects. The reason is that, unless there is a disclaimer or redefinition, whether explicit or implicit, the proper construction of any claim language must, among other things, "stay true to the claim language," and, in order to avoid giving invention-defining effect to specification language included for other descriptive and enablement purposes, the court's focus remains on understanding how a person of ordinary skill in the art would understand the claim terms. Under our Phillips approach, the plainness of the claim language necessarily affects what ultimate conclusions about claim construction can properly be drawn based on the specification. For that reason, the court has repeatedly stated since Phillips that redefinition or disavowal is required where claim language is plain, lacking a range of possible ordinary meanings in context. See Pacing Technologies, LLC v. Garmin Int'l, Inc., 778 F.3d 1021 (Fed. Cir. 2015).
Here, the specification does not provide a basis for reasonably adopting a construction that contradicts the plain meaning of the claim language. Moreover, the plain meaning is confirmed by the prosecution history, which we have indicated is to be consulted even in determining a claim's BRI.
Alleged Written Description and Enablement Deficiencies Cannot be Considered in IPRs
One final point about this claim-construction issue: Sipnet suggests in various ways that the specification does not adequately describe or enable the systems or processes involving a query about current connection status under Straight Path's claim construction. But written-description and enablement challenges were not, and could not have been, part of the inter partes review that is now before us. See 35 U.S.C. § 311(b) (limiting challenges to prior-art challenges). Such challenges involve bottom-line or subsidiary factual issues that have not been litigated or adjudicated. Accordingly, Sipnet's arguments about insufficient specification support for the claims if they are given their plain meaning, arguments not adopted by the Board, do not alter our conclusion about claim construction. We offer no view on the merits of Sipnet's suggestion of written-description or enablement problems.
Construction of "Process" was not Previously Argued so Cannot be Argued before the Circuit
Straight Path's second challenge rests on the contention that the Board failed to construe "process." But Straight Path did not preserve that contention: it did not request a construction of "process" in its preliminary response to Sipnet's petition to institute inter partes review, in its response after the Board instituted the review, or at the oral hearing before the Board. The Board thus committed no error in not construing "process."
Judge Dyk's Dissent
I respectfully dissent 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. The majority's insistence that "is" requires absolute currency fails to take account of a common usage of the term "is" and our prior decision in Paragon Solutions, LLC v. Timex Corp., holding that a reference to "real-time" does not necessarily require absolute currency. 566 F.3d 1075 (Fed. Cir. 2009). More importantly, the majority fails to give sufficient weight to the specification which Phillips v. AWH Corp. holds "is always highly relevant to the claim construction analysis" and is "the single best guide to the meaning of a disputed term."