Indacon, Inc. v. Facebook, Inc.


Docket No. 2015-1129

NEWMAN, REYNA, STOLL
June 6, 2016

Brief Summary: DC claim constructions based on specification and prosecution history found not to be erroneous and the judgment of noninfringement affirmed.

Summary: Indacon appealed DC construction of the terms “alias” (and “alias term”), “custom link”, “custom linking relationship”, and “link term” in its US 6,834,276 “directed to a system and method for searching, indexing, perusing, and manipulating files in a database, particularly through the insertion of automatically generated hyperlinks.” Indacom alleged Facebook infringed claims 1-4 and 8-11 but under the DC claim construction stipulated to noninfringement. The FC panel reviewed the DC construction de novo since it was based only on intrinsic evidence (Teva, FC 2015). Regarding “alias”/“alias term”, the FC panel agreed with the DC that the terms “are limited to textual expression” because the ‘276 specification “defines ‘term’ by referring to forms of textual expression (‘words, numbers, spaces, etc.’)” and nothing in it “suggests ‘alias’ encompasses graphical expression” (e.g., the “Summary of the Invention”), and “[t]he prosecution history also fails to support” another interpretation. Facebook argued, and the FC panel agreed, that the “‘link claim terms’ have no accepted meaning in the art”; therefore, the terms “ordinarily cannot be construed broader than the disclosure in the specification” (Irdeto Access, FC 2004). And the FC panel found the specification to support the DC’s finding, which it also found to be supported by the prosecution history (“[T]he patentees’ description of their invention during prosecution as allowing every instance or all instance of designated terms to be linked to a file bolsters the [DC’s] constructions.”) Indacon argued the statements during prosecution “cannot form the basis for disavowel” but the FC panel explained it “need not find disclaimer where the specification does not permit a broader interpretation of these claim terms and the terms otherwise lack an ordinary meaning in the art” (“the interested public has the 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” (Fenner Invs., FC 2015)). Indacon’s claim differentiation arguments were also dismissed since the claims on which the arguments were based are independent claims and the doctrine is not applicable “where, as here, the claims are not otherwise identical in scope” (World Class Tech., FC 2014; Andersen, FC 2007). In addition, the FC panel explained that the doctrine “cannot enlarge the meaning of a claim beyond that which is supported by the patent documents, or relieve any claim of limitations imposed by the prosecution history.” Thus, the DC claim constructions were found not to be erroneous and the judgment of noninfringement affirmed.

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