Fenner Investments, Ltd. V. Cellco Partnership (dba Verizon Wireless)

Docket No. 2013-1640

February 12, 2015

Brief Summary: DC claim construction and decision of noninfringement affirmed since it properly consulted the description [block diagrams and flow charts] in the ‘706 specification ‘for the purpose of better understanding the meaning of the claim”.

Summary: Fenner appealed DC grant of SJ to Cellco that it does not infringe US 5,561,706 directed to personal communication systems (PCS) with which users may access a communications network from various locations. With PCS, each user is identified by a personal identification number (PIN) by which call service and billing are identified with the user, and not with a particular telephone unit. At the claim construction hearing, the DC adopted Cellco’s (Verizon’s) proposed construction of PIN as “a number separate from a billing code (as construed herein), identifying an individual system user, which is associated with the individual and not the device.” “Billing code” was construed as “a code separate from the [PIN] (as construed herein) identifying a particular billing authority (as construed herein).” Under these constructions, the parties stipulated to final judgment of noninfringement although Fenner retained its right to appeal. The issue on appeal is the DC definition of PIN, which Fenner argued was erroneously imported that definition from the specification and relied on prosecution history. The FC opinion explained that “a claim receives the meaning it would have to persons in the field of the invention, when read and understood in light of the entire specification and prosecution history” (Biogen, FC 2013; Phillips, FC 2005; Retractable Techs., FC 2011 (“the role of claim construction is to ‘capture the scope of the actual invention’ that is disclosed, described, and patented”)). The opinion also noted that “[w]ords…can be imperfect at representing their subject”, citing the USSC Nautilus decision (2014) that “‘the definiteness requirement must take into account the inherent limitations of language’, and that clarity is required although ‘recognizing that absolute precision is unattainable.’” The FC found that the DC “appropriately consulted the description [block diagrams and flow charts] in the ‘706 specification ‘for the purpose of better understanding the meaning of the claim” (White v. Dunbar, US 1886). Verizon argued that the description of “the present invention” limited the claims (Verizon, FC 2007). The FC also concluded the PH supported the DC construction in that Fenner overcame a prior art rejection by stressing their system is “user-centered” in contrast to the prior art “device-centered” system. Fenner argued those statements were not limiting because those “were not the basis for the grant of the patent”. But the FC disagreed since “the interested public has a right to rely on the inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given” (Microsoft, 2004). And Fenner’s arguments regarding inoperability were not accepted. Arguments regarding claim differentiation (“claim 19 would become redundant or superfluous”) were also dismissed since “it cannot enlarge the meaning of the claim beyond that which is supported by the patent documents, or relieve any claim of limitations imposed by the prosecution history” (Retractable Techs., FC 2011). The DC decision was therefore affirmed.

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