Arguments made distinguishing prior art spell doom for broader claim construction

July 27, 2008
Post by Blog Staff

In a decision last week, the Federal Circuit affirmed a district court's claim construction and related grant of summary judgment of non-infringement.The court affirmed the construction in part because the plaintiff's interpretation of the claim elements was at odds with the plaintiff's stance during the prosecution history. Specifically, the patentee added the element in question to overcome the prior art, then argued that it should be interpreted in a fashion that would have been anticipated by the same piece of prior art. As a result, based on the prosecution history, the Federal Circuit affirmed the district court's claim construction. The court likewise found no genuine issue of material fact regarding infringement under that construction, and therefore affirmed the judgment of noninfringement.More detail of Bd. of Regents of the Univ. of Tex. Sys. v. Benq Am. Corp. after the jump.The plaintiff, Board of Regents of the University of Texas System, owns a patent relating to an apparatus and method designed to enable non-verbal entry and transmission of a word (or words) using a standard, touch-tone telephone. Essentially, the method takes an otherwise ambiguous input and compares it to a "vocabulary" of possible words. The system can also minimize memory requirements and enable an expanded word recognition capability by using a "vocabulary" of syllabic elements instead of words. The relevant claim is claim 10, which is reproduced below (emphasis added):

10. A method of communicating, utilizing a signal-generating keyboard where at least some of the keys represent two or more alphabetic characters, comprising the steps of:
inputting a word into said keyboard by depressing a single key for each
alphabetic character of said word;
transmitting signals generated by the key depressions;
receiving said transmitted signals and decoding the signals into binary code;
matching said binary code with one or more pre-programmed codes, each pre-programmed code being representative of a syllabic element;
[f]orming a representation of the word from the one or more syllabic elements represented by the matched one or more pre-programmed codes; and
outputting the word representation in a form perceptible to the user.
A prior art publication taught a system where a single key is pressed for each letter, even though the key corresponds to multiple letters. During prosecution of the patent, the patentee obtained allowance of the claims over this reference by arguing the "invention employs a data base of syllabic elements (i.e. syllable-like letter groups) which are combined to form a word of standard English text."Texas sued 56 defendants for infringing claim 10. After a Markman hearing, the district court construed the term "syllabic element" to mean "a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word." The district court concluded the term "one or more pre-programmed codes" did not require construction. One defendant, Motorola, filed a motion for summary judgment of noninfringement on the basis that its accused devices did not infringe the "matching" limitation of claim 10, specifically because its "pre-programmed codes" were not all representative of syllabic elements, but instead corresponded to words. The district court granted Motorola's motion, and noted the plain language of claim 10 and the prosecution history required that each time a binary code is matched, it must be matched against a syllabic element. The district court further reasoned that if it were to adopt the plaintiff's argument that the accused devices "intermittently infringe" when they do match against a syllabic element, then a prior art reference would anticipate the claim. After summary judgment was granted to Motorola, the parties stipulated to judgment of noninfringement for all remaining defendants based on the district court's construction. Texas appealed.The Federal Circuit affirmed. Regarding the claim construction of "syllabic element," the court reviewed the language of claim 10 and, based on the language of the claim, a word is comprised of one or more "syllabic elements." The court then turned to the specification which repeatedly distinguished between a "word" and a "syllabic element," further indicating that a word is comprised of syllabic elements, and that the terms "word" and "syllabic element" are not coextensive in scope. The Federal Circuit finally turned to the prosecution history, and noted "syllabic element" was added to claim 10 to overcome prior art describing using words for the same purpose, and that if "syllabic elements" included words then that portion of the claim would have been anticipated by the same piece of prior art. Therefore the Federal Circuit affirmed the district court's construction of "syllabic element."Regarding the claim construction of "each pre-programmed code being representative of a syllabic element," the Federal Circuit noted that the district court granted summary judgment of non-infringement in favor of Motorola on the ground that the accused devices did not rely upon a vocabulary of only syllabic elements. The plaintiff argued that infringement occurs whenever a match with a match with a syllabic element occurs, even if matches are also made with non-syllabic elements. The Federal Circuit again agreed with the district court. Because the claim and the prosecution history distinguished between "each pre-programmed code" and "the matched one or more pre-programmed codes, the Federal Circuit concluded that the claim phrase "each pre-programmed code being representative of a syllabic element" means that the vocabulary only includes syllabic elements. The fact that the claim used the open transitional phrase "comprising" did not change the result. The effect of comprising is to not exclude additional, unrecited steps; it does not "reach into" each of the claimed steps to render every word and phrase therein open-ended. This is particularly the case where the patentee has narrowly defined the claim term it now seeks to have broadened. Turning to infringement, the Federal Circuit noted that the basis for the district court's grant of summary judgment was not because the accused devices include vocabularies of only complete words, but rather that the accused devices do not contain vocabularies of only syllabic elements. None of the accused devices relied upon a vocabulary of only syllabic elements, even if certain entries in their respective vocabularies happen to be a single syllable. Thus, the Federal Circuit agreed with the district court that the accused devices did not infringe the asserted claims of the patent, and affirmed the grant of summary judgment.To read the full decision in Bd. of Regents of the Univ. of Tex. Sys. v. Benq Am. Corp., click here.

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