CAFC Overrules PTAB Claim Construction That Used The Specification To Contradict Unambiguous Claim L
The CAFC recently overruled a PTAB claim construction that altered the plain meaning of unambiguous claim language in an attempt to align the claim with an excerpt from the specification. Straight Path IP Group, Inc. v. Sipnet EU S.R.O., Case No. 2015 (Fed. Cir. Nov. 25, 2015). The Court criticized the Board’s decision for ignoring the literal language in favor of the specification, holding that when claim language is unambiguous, the specification plays a more limited role; that is, instead of acting as a guide for resolving “uncertainties on interpretive questions,” the specification can only impact claim scope if it clearly disclaims or redefines the unambiguous language. (Id. at 8).
At issue in this case was the ‘704 patent, which is directed to a technique for establishing a point-to-point connection between a pair of computers over the Internet. The claim at issue states that when a first computer wants to connect with a second computer, it sends an inquiry to a network server, asking whether the second computer “is connected to the computer network.” The Petitioner argued that the language "is connected" should be construed in view of the embodiment shown in the specification. Accordingly to the Petitioner, the disclosed server responds to such an inquiry by providing an IP address from when the second computer registered with the server, regardless of whether the address remains viable at the moment of inquiry. The Board agreed: “[U]nder the broadest reasonable construction – ‘connected to the computer network’ - encompasses a processing unit that is ‘active and on-line at registration,'" citing an excerpt from the specification that suggests a connection is established when a computer is registered in the database. (PTAB at 6, citing the ‘704 patent at 5:35-38).
The Federal Circuit held that the Board’s claim construction conflicted with plain meaning of the phrase “is connected,” because the claim “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.” (CAFC at 7). The Court criticized the Board for not even mentioning this literal meaning, and instead starting its analysis with the specification. (CAFC at 8). The Court said that the specification of the '704 patent does not contradict the claim's plain meaning. Rather, it reinforces the literal meaning when it proposes that computers should automatically notify the server when they are about to disconnect, so that the server’s information remains current. (CAFC at 11, citing ‘704 patent at 6:10-14).
The Petitioner suggested that the specification does not adequately describe or enable a system that could provide current connectivity status as required by the literal claim language. But the CAFC would not even entertain that argument because such issues are beyond the scope of inter partes review. (CAFC at 12).
Judge Dyk dissented, arguing that the language “is connected” does not require “absolute accuracy or absolute currency” for the same reason that the Court previously concluded in another case that the phrase “real time” need not be “instantaneous.” (Dyk at 5, citing Paragon Solution, LLC v. Times Corp., 566 F.3d 1075 (Fed. Cir. 2009).