Docket Nos. 2015-1146
PROST, DYK, HUGHES
February 2, 2016
Brief Summary: DC claim constructions found to be correct based on the claim language read in view of the specification and prosecution histories.
Summary: Columbia appealed DC claim construction of three claim terms and subsequent partial final judgment of non-infringement and invalidity regarding six patents relating to systems for computer security and blocking malware. Claim construction is reviewed by the FC de novo (Teva, US 2015), and “begin[s]…by considering the language of the claims themselves…read in view of the specification” (Phillips, FC 2005; Markman, FC 1995; Vitronics, FC 1996 (specification is the “single best guide to the meaning of a disputed term”)). The opinion explains “[a] court should also consider the patent’s prosecution history…and may rely on dicitionary definitions” that do “not contradict any definition found in or ascertained by a reading of the patent documents.” Columbia argued the DC “departed from the plain meaning” of “byte sequence feature” and “probabilistic model of normal computer usage”, citing Thorner (FC 2012, “patentee must clearly express an intent to redefine the term”). The FC panel disagreed, however, explaining that their “case law does not require explicit redefinition or disavowel”, “may be inferred from clear limiting descriptions of the invention in the specification or prosecution history” (Aventis Pharma S.A., FC 2012 and Phillips, FC 2005 (“our en banc Phillips opinion rejected this very approach” as “improperly restrict[ing] the role of the specification in claim construction”)), and “[t]he only meaning that matters in claim construction is the meaning in the context of the patent.” It found the DC construction that “byte sequence feature” represents “machine code” to be “well supported by the specification”. The FC panel also affirmed the DC decision that claims 1 and 16 of the ‘544 patent were indefinite because “the claims describe the step of extracting machine code instructions from something that does not have machine code instructions…nonsensical in the way a claim to extracting orange juice from apples would be” (Allen Eng’g, FC 2002). Columbia argued the DC “erroneously import[ed] a negative limitation from the specification despite no ‘clear and unmistakable’ disclaimer”. But the FC panel agreed with the DC’s conclusion based on the specification and the prosecution history. It therefore affirmed the non-infringement judgments based on those claim constructions. Columbia also disputed the construction of the claim term “anomalous” but the FC found the DC to be correct, noting that “each claim in a patent is presumptively different in scope” and “in a situation where dependent claims have no meaningful difference other than an added limitation, the independent claim is not restricted by the added limitation in the dependent claim” (RF Del., FC 2003; Phillips, FC 2005; Acumed, FC 2007; Anderson, FC 2007 (“[C]onstruing the independent claim to exclude material coverd by the dependent claims would be inconsistent.”))