Earlier this month the United States Court of Appeals for the Federal Circuited issued its decision in GPNE Corp. v. Apple, Inc., a precedential case that challenged a claim construction made by the district court. Following a seven-day jury trial, the district court found that the asserted claims in U.S. Patent No. 7,570,954 and U.S. Patent No. 7,792,492 were not infringed. The Federal Circuit panel, which was made up of Chief Judge Prost, Judge Taranto and Judge Chen, affirmed.
GPNE sued Apple for direct infringement of claims in two of GPNE’s patents. The patents at issue relate to a two-way paging system, where the paging devices are capable of not only receiving messages but also sending messages back in response. The devices communicate through a central control station, which passes the message on to a recipient device. The central control station can also receive a message from a telephone, as would be the case with a typical pager, and pass it on to a recipient device. The specification specifically discloses a two-way paging system that operates independently from a telephone system for wireless data communication between users, which is consistent with the prosecution history as well.
The claims asserted by GPNE all recited “nodes” rather than “pagers,” even though the word “node” was not used anywhere other than in the Abstract of the two patents containing the asserted claims. Seizing on this, Apple argued at the Markman hearing that a “node” as claimed should be construed as being a “pager.” The district court ultimately agreed with Apple, construing the term “node” to be a “pager with two-way data communications capability that transmits wireless data communications on a paging system that operates independently from a telephone network.”
At trial both GPNE and Apple presented evidence regarding whether Apple’s accused devices could be properly characterized as “pagers.” In fact, Chief Judge Prost writing for the panel noted that Apple had contrasted the accused iPhone and iPad to characteristics of pagers common in the 1990s during both the opening and closing arguments. Furthermore, Apple asked their own experts, as well as GPNE experts, whether they thought an iPad or an iPhone was a pager. While GPNE did provide rebuttal testimony, Prost observed that GPNE did not object to these questions or arguments.
Ultimately, the jury was instructed to use the plain and ordinary meaning for “pager” and ultimately issued a verdict in favor of Apple, finding no infringement. On appeal, GPNE took issue with two aspects of the “node” claim construction – the “pager” aspect and the “operates independently of a telephone network” aspect.
Beginning first with “pager”, the Federal Circuit noted the patent consistently refers to “nodes” as “pagers.” Prost explained that when a term in the patent is consistently used to characterize a claim term in a particular way it is proper to construe the claim in accordance with the characterization used in the specification. Prost then went on to observe that the words “pager” and “pager units” appear in the specification more than 200 times, and, apart from the Abstract, the specification repeatedly and exclusively uses “pager” and “pager units” to refer to the devices in the patented system. Furthermore, the Court found that nothing in the specification is inconsistent with the characterization of the devices as a type of pager. Moreover, the prosecution history also supports construing “node” as a type of “pager” because the inventor’s Rule 131 declaration consistently and exclusively describes the invention as a system of pagers. Ultimately, based on this, the Federal Circuit had little difficulty determining that the district court did not err in characterizing a “node” as a “pager.”
Regarding the language “operates independently of a telephone network”, GPNE argued it was improper to use this phrase because the entire phrase was imported from a single summation sentence from the specification. That sentence read as follows: “Thus, the invention provides a two-way paging system which operates independently from a telephone system for wireless data communication between users.” The Federal Circuit held that it was proper for the district court to rely on this sentence in the specification when construing the claim because it is a limiting to describe features of the invention when describing the invention as a whole. The Court pointed out that this understanding of the limiting nature of this sentence is bolstered by the prosecution history, particularly the Rule 131 declaration provided by the inventor, which similarly characterizes the invention as operating independently of a telephone network.
Ultimately, the Federal Circuit ruled that it was proper for the district court to conclude that in order to be infringing a “node” should be able to operate independently from a telephone network.
At first glance this case may seem to demonstrate yet another cautionary tale against using the word “invention” during drafting and prosecution. Such a reading of this case, or any similar case that finds “the invention” limiting, risks missing the forest for the trees. It would be better to consider this case an illustration of an unnecessarily narrow specification that did not disclose an invention that was anything other than a paging system that operates independently from a telephone system.
The problem isn’t the use of some magic term or phrase; it is the fact that the description is specific and narrow. Thus, focus on some magic term or phrase misses the entire point of the Federal Circuit’s cases. If you articulate narrowly in the specification then your claims cannot cover broad, undisclosed articulations of the invention. For example, in Absolute Software, Inc. v. Stealth Signal, Inc., 659 F. 3d 1121, 1136-1137 (Fed. Cir. 2011), the Court per Judge O’Malley (with then Chief Judge Rader and then Judge Prost) explained: “the phrase “present invention” or “this invention” is not always so limiting, such as where the references to a certain limitation as being the “invention” are not uniform, or where other portions of the intrinsic evidence do not support applying the limitation to the entire patent.” In other words, if you describe your invention as having A, B and C and there is no support for the invention being anything other than A, B and C, then your invention is limited to A, B and C. The problem for GPNE was there was support only for an invention that operates independently from a telephone system. Had there been examples or discussion of a system that operated relying on a telephone system then the outcome should have been different, although the wording in the summary sentence could and should still have been better.
The Federal Circuit also addressed another issue raised by GPNE that the district court improperly failed to give to the jury a construction for “pager”, instead leaving the issue for the jury itself to decide. On this, the CAFC first noted that a previous case, O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351, 1362 (Fed. Cir. 2008), provided the general rule that “[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it…[because] the ultimate question of construction [is] a legal question.” Nonetheless, the Federal Circuit went on to explain that the duty is not without limit. and that the district court is under no obligation to address potential ambiguities that have no bearing on the scope of the claim. The Federal Circuit then concluded “the district court’s construction was sufficient to resolve the dispute over the scope of the disputed claim term “node.”