Federal Circuit Reverses Board’s Claim Construction Based on Plain Meaning of the Claim Language


Takeaway: When claim language has a plain meaning that leaves no genuine uncertainties on interpretive questions, it is unlikely that the specification would support a different meaning; the specification plays a more limited role than in the common situation where claim terms are uncertain in meaning.

In its Opinion, the Federal Circuit rejected a claim construction on which the Board below relied for its decision and reversed the decision and remanded for further proceedings under the correct construction. The ‘704 patent entitled “Point-to-Point Internet Protocol” describes “certain protocols for establishing communication links through a network.” The Board had cancelled claims 1-7 and 32-42 of the ‘704 patent based on anticipation and obviousness.

As the Court explained:

The ’704 patent identifies a deficiency in what the prior art taught about real-time voice or video communications between two processing units over a network, such as 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. ’704 patent, col. 1, lines 48-52. 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.” Id., col. 1, lines 53-56. 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. Id., col. 1, lines 59-61, col. 2, lines 1-2.

In its Petition below, Sipnet requested cancellation of the challenged claims “as anticipated by and obvious over several prior-art references, most significantly ‘Net-BIOS’ and ‘WINS.’” Of “central importance” on appeal, the Board adopted Sipnet’s proposed construction of “a query as to whether the second process is connected to computer network.” The parties had agreed that the language requires “being on-line,” but they “disagreed about whether, as Straight Path contended, the language refers to a present-tense status . . . or whether, as Sipnet contended, it ‘simply requires being registered with the server.’” The Board below adopted Sipnet’s construction as the broadest reasonable construction based on the specification. Specifically, 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 the 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 the time, it is in fact not online.” Based on that construction, the Board found the challenged claims anticipated by NetBIOS, WINS, or a combination of NetBIOS and WINS.

On appeal, the Court reviewed the Board’s construction de novo. The Court started with the claim language, “which has a meaning that can only be called plain.” Specifically,

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. . . . 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 below, however, “did not address the facially clear meaning, instead turning immediately to the specification.” On appeal, the Court noted that Sipnet similarly “offers no argument that, as a matter of plain meaning, the claim language ‘is’ calls for anything but present-status information” or “points[s] to anything in other claim language that contradicts the plain meaning.”

The Court continued:

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. . . . Reflecting the distinct but related roles of the claims and specification, the governing approach to claim construction thus maintains claim language’s key (not always decisive) role in claim construction: it stresses the importance of the specification in identifying and resolving genuine uncertainties about claim language, and in stating redefinitions or disavowals, id. at 1315–17, while it rejects a sequenced, dictionary-driven, burden-shifting approach to claim construction, id. at 1320–24. 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.

Here, the Court found, “the specification does not provide a basis for reasonably adopting a construction that contradicts the plain meaning of the claim language.” The passage cited by the Board “does not expressly or implicitly redefine ‘is connected’ to mean ‘is still registered, once was connected, and may or may not still be connected,’ and it does not otherwise establish that being active and online at the time of registration means, even if contrary to fact, being active and online when a caller’s query for a callee’s status comes in.” The plain meaning of the claim language “is therefore not overridden by the specification” and is in fact “confirmed by the prosecution history.” Specifically, in distinguishing claims over NetBIOS, the patentee “made the very distinction that is at issue here—between still being registered and actually being online.”

The Court noted, however, that to the extent the plain meaning construction is not adequately described or enabled by the specification, it offers “no view on the merits” because such challenges “were not and could not have been, part of the inter partes review.” “Such challenges involve bottom-line or subsidiary factual issues that have not been litigated or adjudicated.” The Court thus instructed the Board to consider the correct claim construction on remand.

Regarding a second challenge on appeal, “that the Board failed to construe ‘process,’” the Court held that Straight Path “did not preserve that contention,” as it did not request a construction of ‘process’ in its preliminary response . . . or at the oral hearing before the Board”; “[n]or did Sipnet.” The Board “thus committed no error in not construing ‘process.’”

Judge Dyk dissented-in-part. Specifically, Judge Dyk took the position that the majority’s apparent “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.” “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.’”

Judge Dyk explained:

Contrary to the majority’s assertion, 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.

Judge Dyk reasoned that the “only meaning that matters is the meaning in the context of the patent.” According to Judge Dyk, the “majority’s construction of the term is also contrary to the specification in this case,” which is “clear that ‘is connected’ does not require a real-time check.” Specifically, “[c]hecking historical ‘relatively current’ information in a database is not a ‘real time’ determination.” Indeed, at oral argument, “the patentee conceded that its construction, now adopted by the majority, would require the database to be always accurate.”

Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 2015-1212
Appeal from the USPTO, PTAB in No. IPR2013-00246
Dated: November 25, 2015
Patent: 6,108,704
Before: Dyk, Taranto, and Hughes
Opinion by: Taranto
Concurring in part and dissenting in part by: Dyk