Claim Construction and Patent Profanity
What do a 370Z® Roadster, a pair of LeBron X’s and a Dream Angels Ruffle Babydoll have in common? In Parallel Networks, LLC, v. Abercrombie & Fitch Co., No. 2012-1227 (Federal Circuit, January 16, 2013), the companies who market them, (Nissan North America, Inc., Nike, Inc., and Victoria’s Secret Direct Brand Management, LLC, respectively), along with seventy-four other defendants, won a patent infringement case at the Federal Circuit involving U.S. Patent No. 6,446,111 of Lowery (“the ‘111 patent”). The case spotlights claim construction, and demonstrates use of the specification in interpreting the claims. In particular, it serves as a reminder of the danger posed by the presence of patent profanity in the specification.
Filed in 1999 and granted September 3, 2002, the ‘111 patent relates to a data processing system comprising a client device, such as a PDA coupled to a communications link, that is operable to communicate a request over the communications link. An executable “applet” (a small program typically performing one specific task), dynamically generated by the server in response to the request, is also part of the data system. As an example, an applet would perform the limited function of displaying an image of a particular laptop in response to a web user’s request on a website offering electronics. Applets and other technology known as plug-ins predated the ‘111 patent, and could be used to provide similar dynamic capabilities to web pages. However, the ‘111 patent claims an improved applet that avoids the need to repeatedly go out over the wireless network to obtain classes and objects needed by the applets, as well as data. The solution to this problem offered by the ‘111 patent was that the new applet could obtain the needed data and functionality in a single transmission.
In March 2010, Parallel filed suit against 120 defendants in the United States District Court for the Eastern District of Texas. A Markman hearing was ordered to construe three terms: (1) executable applet; (2) dynamically generated by the server in response to the request; and (3) data interface capability. Critical was the district court’s adoption of the defendant’s construction of the second term to mean:
constructed at the server, by combining the requisite functionality with the necessary data, at the time of and in response to the client request.
Slip Opinion at 13.
The court found support in the specification’s repeated assertions that the data and functionality are sent together to the client to reduce the number of transmissions. This was also consistent with arguments Parallel had made during prosecution, where the ‘111 patent was distinguished over prior art based on the fact that the applet in the patented system was generated in response to the client’s request.
In evaluating infringement, the district court found that for each of the accused systems “at least one of the functional code or necessary data is contained … as only a link,” (Slip Opinion at 14) so that the dynamically generated claim limitation was missing. The court then ruled that the defendants were entitled to summary judgment.
Parallel then filed a motion under Federal Rule of Civil Procedure 59(e), seeking to amend its infringement claims. The district court denied the motion and severed the defendants for which the summary judgment had disposed of all the ‘111 patent’s claims. Parallel raised an appeal on both the claim construction issue and the ruling on the 59(e) motion.
The Federal Circuit affirmed the district court in both matters.
With respect to claim interpretation, in agreeing with the district court, the Federal Circuit concluded that:
the claim teaches that the applet is “generated” in response to a user request, is “executable” and “operable,” is “associated with” the two “constituent” systems of particularized data and functionality, and is thereafter “to be transferred.”
Slip Opinion at 16.
In its analysis, the Federal Circuit first cited definitions out of Webster’s dictionary for the meaning of the words “executable” and “generate,” and concluded that the particularized data and functionality of the applet is “capable of being executed and carried out fully and completely” (Slip Opinion at 17).
The Federal Circuit next cited the specification. In particular, the Federal Circuit argued that the specification:
even more explicitly[ ] explains that, in the “present invention,” “the appropriate data and associated data handling capabilities” are transmitted “as a group.” Id., col. 2, line 55, through col. 3, line 15; see also id., col. 12, ll. 8-10 (“the needed functionality and the required data are bundled together in the applet”). The specification also makes clear that the patent’s executable applet, as generated, contains data and functionality: “According to the teachings of the present invention when the applet 26 is generated, the applet 26 does not merely contain an executable program as with typical applets.
Slip Opinion at 17, emphasis added.
Thus, in its analysis, the Federal Circuit utilized the specification’s recitation of the term “present invention” as basis for its claim construction. The Federal Circuit rejected Parallel’s arguments that the term “dynamically generated” meant that the asserted claims require that the data and functionality need only be associated with the applet, not combined into a single file with the applet (Slip Opinion at 18-19), because inter alia, it ran counter to the teaching of the specification and would bring in distinguished prior art. (Slip Opinion at 19)
Finally, the Federal Circuit also disagreed with Parallel’s arguments relevant to the Rule 59(e) motion, holding that Parallel was seeking to amend its infringement claims to make arguments that could have been made prior to summary judgment (Slip Opinion at 24). The Federal Circuit stated that:
[b]ecause the patent makes clear that the applet must be transferred with data and functionality initially, and because the parties briefed that very issue before the district court, Parallel’s newly claimed infringement allegations do not rely on anything new that gives rise to a valid Rule 59(e) motion.
Slip Opinion at 24.
In essence, this case presents a fairly straightforward claim construction analysis. However, a take-away of note is the potential damage done by the patentee’s repeated use of the phrase, “present invention,” which the Federal Circuit utilized to narrow the scope of the claims. Such phrases are often included in the unfortunate basket of terms designated as “patent profanity” in patent applications, because they potentially can be used adversely to the patentee in subsequent litigation. The accused infringer will argue that repeated use of the term “present invention,” served to fully define the scope of what the claims cover, and more importantly, what they do not.
While it isn’t clear that Parallel would have prevailed in this case even had the “present invention” language been missing from the specification, it certainly proved damaging. This is particularly unfortunate, since such damage could easily have been avoided in the drafting stage; e.g., by replacing the term “present invention,” with “an embodiment,” or “some embodiments.”
– Bill Reid
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