Federal Circuit Reverses PTAB Claim Construction in IPR

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Federal Circuit Review No. 78-1
Plain and Ordinary Meaning of the Term “Is Connected” Requires A Concurrent Connection

Straight Path IP Group, Inc. v. Sipnet EU S.R.O., No. 2015-1212, 2015 U.S. App. LEXIS 20477 (Fed. Cir. Nov. 25, 2015) (Before Dyk, Taranto, and Hughes, J.) (Opinion for the court, Taranto, J.). Click Here for a copy of the opinion.

Sipnet filed a petition for inter partes review of a patent owned by Straight Path IP Group. The patent claimed a computer-implemented method for establishing a point-to-point communications connection between computers whose IP addresses frequently changed. The system included a connection server which maintained a database of users, online status, and IP addresses. When a first computer desired to connect to second computer, it would a query the connection server for the IP address of the second computer. Each computer registers with the database by transmitting a login message containing its IP address and user identity to the connection server, and it transmits a log-off message when it disconnects. The connection server timestamps each login, and deletes entries after a certain period of time if no log-off message is sent (e.g., the connection was lost).

The Patent Trial and Appeal Board (Board) cancelled the claims of the patent, finding them anticipated or obvious over several references. Straight Path appealed the Board’s cancellations, challenging its construction of the term “program code for transmitting . . .a query as to whether the second [computer] is connected to computer network,” and challenging the failure of the board to construe the term “process.”

cafc-federal-circuit-statue-335b copyThe Board construed “is connected” to mean that the computer be “active and online at registration,” even if the connection server’s database record was inaccurate, and the computer was no longer online. The Court reversed this construction, holding that the plain and ordinary meaning of the term “is connected” requires that the computer be connected to the network at the time the query is sent. The term “is” has a plain meaning, which requires concurrency. Where the claim language has a plain meaning that leaves no uncertainty, the specification generally cannot be used to infer a different meaning, absent clear redefinition or disavowal. Here, there was no such redefinition. The only support in the specification for the Board’s construction was a description of the queried computer as “established in the database as an active on-line party,” which database could be inaccurate. Since this was not a clear redefinition of the term “is connected,” it cannot be used to change the meaning of the claim language.  The prosecution history supported this view, because the assignee distinguished a reference in a previous reexamination precisely because the claim required that the queried computer be actually online, and not merely registered in a database.

The Court further rejected Straight Path’s challenge of the Board’s refusal to construe the term “process,” because the issue had not been preserved for appeal. Neither Straight Path nor Sipnet asked for a construction of “process” at the petition, post-institution, or oral argument phases of the review.

The Court remanded the case to the Board for reconsideration under the proper construction of “is connected.”

Judge Dyk filed a dissent to the Court’s conclusion that the plain meaning of “is” requires absolute concurrency. In Paragon Solutions, LLC v. Timex Corp., the Court held that a reference to “real time” did not require absolute concurrency. For example, if a person says “John is at home,” and you ask how they know, the answer “I saw him there five minutes ago” would not be unreasonable, even though John may have left in the last five minutes. Judge Dyk also argued that the Court’s claim construction is inconsistent with the described embodiments, all of which included a connection server with a database which may not be perfectly accurate. Thus, the term “is connected,” as used in the claims, should not be construed to require perfect concurrency or accuracy.

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One comment so far.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    December 12, 2015 09:22 am

    For all the complaints by some patent litigators that IPRs give too broad a claim definition, this is the first case report I recall seeing of a Fed. Cir. reversal for that reason? This report strangely ignores the immediately below important statement from the decision that the result is the same under either BRI or Phillips. This actual language from the majority opinion says that the result would not have been any different under Phillips claim construction:

    “Straight Path notes that the patent has now expired and on that basis asks us to determine the governing construction under the principles of Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), because the Board applies Phillips, rather than the broadest-reasonable-interpretation standard, for expired patents. See In re Rambus, Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014). We need not explore the issues raised by that request, however, because we conclude that the Board adopted a claim construction that is erroneous even under the broadest-reasonable-interpretation standard.”