U.S. Court of Appeals for the Federal Circuit, Personalized Media Communications, LLC v. Apple, Inc., Docket No. 18-1936

Patent Interpretation

Claim Construction

Intrinsic Evidence:

-       Claims

-       Specifications

-       Prosecution History of the Patent

-       Understanding of One Skilled in the Art

Broadest Reasonable Interpretation

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2016-00755.

Per recent regulation, the Board applies the Phillips claim construction standard to IPR petitions filed on or after November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R. § 42.100(b)).

Because Apple filed its IPR petition before November 13, 2018, we apply the broadest reasonable interpretation standard.

The task of claim construction requires us to examine all the relevant sources of meaning in the patent record with great care, the better to guarantee that we determine the claim’s true meaning. Athletic Alts., 73 F.3d at 1578. “When construing claim terms, we first look to, and primarily rely on, the intrinsic evidence, including the claims themselves, the specification, and the prosecution history of the patent, which is usually dispositive.” Sunovion Pharm., Inc. v. Teva Pharm. USA, Inc., 731 F.3d 1271, 1276 (Fed. Cir. 2013) (first citing Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc); then citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). We consider these various sources of meaning “because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically.” Phillips, 415 F.3d at 1314.

The prosecution history, in particular, “may be critical in interpreting disputed claim terms because it ‘contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims.’” Sunovion, 731 F.3d at 1276 (quoting Vitronics, 90 F.3d at 1582). Accordingly, even where “prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.” Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1366 (Fed. Cir. 2015). For example, an applicant’s repeated and consistent remarks during prosecution can define a claim term by demonstrating how the inventor understood the invention. Sunovion, 731 F.3d at 1277. Similarly, an applicant’s amendment accompanied by explanatory remarks can define a claim term by demonstrating what the applicant meant by the amendment. Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 977–78 (Fed. Cir. 2014).

The broadest reasonable interpretation standard applies in this IPR proceeding. Thus, the Board’s interpretation must be reasonable in light of the specification, prosecution history, and the understanding of one skilled in the art. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015), overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). The broadest reasonable interpretation must also take into account “the context of the entire patent.” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (Fed. Cir. 2019) (quoting Phillips, 415 F.3d at 1312–13); see also In re Translogic Tech., Inc., 504 F.3d 1249, 1256–58 (Fed. Cir. 2007) (applying Phillips “best practices” to claim construction under broadest reasonable interpretation standard).

(…) Embodiments described in a specification can certainly inform the meaning of a disputed claim term, but “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1364–65 (Fed. Cir. 2003) (citing Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048 (Fed. Cir. 1994)). So too if the claim language is narrower than the embodiment.

(…) Again, even where “prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.” Shire, 787 F.3d at 1366. An applicant’s repeated and consistent remarks during prosecution can define a claim term—especially where, as here, there is “no plain or ordinary meaning to the claim term” and the specification provides no clear interpretation. Sunovion, 731 F.3d at 1276–77. Similarly, an applicant’s amendment accompanied by explanatory remarks can define a claim term where, as here, the claim language and specification fail to provide meaningful guidance. Tempo Lighting, 742 F.3d at 977–78. Thus, the Board erred by effectively requiring the prosecution history evidence to rise to the level of a disclaimer in order to inform the meaning of the disputed claim term. Assuming without deciding that PMC’s statements and amendments were inadequate to give rise to a disclaimer, we still find that the prosecution history provides persuasive evidence that informs the meaning of the disputed claim phrase and addresses an ambiguity otherwise left unresolved by the claims and specification.

(…) Accordingly, we conclude that the applicant’s repeated and consistent statements during prosecution, along with its amendment to the same effect, are decisive as to the meaning of the disputed claim term.

((…) More than 280 columns of text in the specification of the ’091 patent).

(U.S. Court of Appeals for the Federal Circuit, March 13, 2020, Personalized Media Communications, LLC v. Apple, Inc., Docket No. 18-1936)