Irreconcilable Differences: Comparing the CAFC’s Finjan and ABS Global Decisions

“Plainly, these decisions leave to be much desired…. The Finjan decision, in particular, could impact the viability of hundreds if not thousands of issued patents.”

FinjanIf you’re a regular reader of IPWatchdog, it probably wouldn’t surprise you to hear that two different U.S. Court of Appeal for the Federal Circuit (CAFC or Federal Circuit) panels recently issued inconsistent, irreconcilable opinions. But what just happened over the last month is particularly concerning.

Specifically, within the span of six days, the Federal Circuit held that:

  • “A computer” means one and only one computer when a subsequent claim element recites “the computer” (Finjan v. Sonicwall); and
  • “A sample stream” means one or more sample streams when a subsequent claim element recites “the sample stream” (ABS Global v. Cytonome/ST).

This comes on the heels of the Federal Circuit’s curious Salazar decision from April 2023, in which the Federal Circuit held that a claim to “a microprocessor” generally could include “one or more” microprocessors, but subsequent recitations of “said” microprocessor in the claim at issue meant that all functions must be performed by one and only one microprocessor.


Beginning first with Finjan, the Federal Circuit approvingly cited Salazar. Reviewing Salazar itself, the Finjan decision observed that “in Salazar v. AT&T Mobility LLC, we agreed with the district court that ‘while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.’”

The Finjan decision then explained that the use of “the” indicates that this claim term refers to an antecedent term. The Federal Circuit went on to indicate that, per Salazar, “‘[T]he indefinite article a means one or more in open-ended claims containing the transitional phrase comprising.’…But that is a separate issue from whether the claims require the same component to perform multiple functions or satisfy multiple limitations of a claim.”

Further, the Finjan decision also remarked that in 01 Communique Laboratory, Inc. v. LogMeIn, Inc., “[w]e explained that the use of ‘a,’ ‘its,’ and ‘the’ in the claims did not require the locator server computer to be a single computer, especially where the patent disclosed that ‘the locator server computer may comprise multiple computers.’…But 01 Communique does not consider whether the same computer must perform each of several subsequent claim limitations referring to that computer, and we see nothing in that decision contradicting the principles outlined in Salazar and Nokia.”

With these decisions in mind, the Finjan decision then concluded that “[e]ven if an infringing system can use ‘one or more computers,’ the plain language of the claims requires at least one of those computers to perform all the functions listed in the claims of the [patent at issue].”

ABS Global

Turning now to ABS Global, this case reverts to the familiar presumption that “a” means “one or more”. A cynic might be forgiven for concluding that it’s because by doing so the Federal Circuit was able to invalidate a patent rather than find no infringement.

Extraordinarily, ABS Global was decided six days after Finjan. ABS Global remarked that “[t]he specific claim language at issue is ‘a fluid focusing region configured to focus the sample stream.’ The use of the definite article, ‘the,’ means that the phrase ‘the sample stream’ refers back to earlier language as an antecedent. The antecedent language is ‘a sample stream’ in the preceding limitation, and it is the singular-only or plural-allowing meaning of that limitation which is determinative. The reference-back ‘the’ language takes its meaning from the meaning of the antecedent, so if ‘a sample stream’ has a plural-allowing meaning, so does the reference-back ‘the sample stream’ phrase.”

ABS Global then cited Salazar immediately after these remarks. It should also be noted that the same judge (Judge Reyna) joined both majorities in Finjan and ABS Global, yet came down on different sides of what appears to amount to the same issue.

ABS Global went on to remark:

“Two familiar aspects of claim-construction analysis strongly support the plural-allowing meaning here. First, ‘at least in an open-ended ‘comprising’ claim,’ like claim 1 of the ’439 patent, ‘use of ‘a’ or ‘an’ before a noun naming an object’ requires that the phrase be construed to mean ‘‘one or more’ unless the context sufficiently indicates otherwise.’…The court has called this the ‘general rule,’ adding that an exception ‘only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.’…Second, the specification here states: ‘[F]or the purposes of the present disclosure, the term ‘a’ or ‘an’ entity refers to one or more of that entity. As such, the terms ‘a’ or ‘an’, ‘one or more’ and ‘at least one’ can be used interchangeably herein.’…That definition reinforces, rather than negates, the applicability here of the ‘one or more’ general rule concerning ‘a’ or ‘an.’ It also brings into play the lexicography principle – that, with narrow exceptions, ‘[w]here the specification instructs as to the meaning of a claim term, ‘the inventor’s lexicography governs.’”

ABS Global then turned to the facts at hand, concluding that neither the prosecution history nor specification provided a basis for rejecting the plural-allowing meaning of “a sample stream.” ABS Global also went on to discuss certain language from a dependent claim that might have informed interpretation of the independent claim, but ultimately it concluded that subsequent recitations of “the sample stream” could still mean plural sample streams.

What to Make of It?

It is difficult to reconcile these decisions. Finjan did not discuss whether the specification of the patent at issue contained any boilerplate language that would have led to a different conclusion, deciding instead that “the plain language of the claims” resolved the issue. But after reviewing the Finjan patent myself, it does not appear that any such boilerplate language existed in the specification. In fact, the patent contained very little boilerplate at all.

About the most that can be done to explain all these seemingly inconsistent decisions is to conclude that in the “processor” cases, the claims subsequently recited what “the processor” does, whereas in ABS Global the claim element was just a noun that did not perform any logic.

Plainly, these decisions leave to be much desired. A less charitable way to reconcile these decisions is to observe that the Federal Circuit will use whichever one of its interpretations will result in a loss to the patentee. What is also interesting is that Federal Circuit often overlooks boilerplate language when it conflicts with their preferred outcome, but then relies on it in decisions like ABS Global when it supports their preferred outcome.

In any case, the Finjan decision, in particular, could impact the viability of hundreds if not thousands of issued patents. If “at least one” or “one or more” is the antecedent, that means—contrary to the stilted way the Federal Circuit is now (inconsistently) reading it—that subsequent recitations of “the processor” refers to “one or more” or “at least one”, not “one and only one” as the Federal Circuit tries to prune it down using casuistry. The intended meaning of such recitations could not be clearer.

Practice Pointers Moving Forward

There could be multiple potential solutions moving forward. One would be to include boilerplate language in the applicant’s specification like that included in the ABS Global patent, if you are not doing so already.

As another suggestion, specifically in terms of a “computer” or “processor” executing certain functions, one might try to craft the claim in a way that recites “one or more” in reference to the computer/processor the first time the phrase appears, and then just focus on the logic steps after that without reciting the “computer” or “processor” again.

Another way forward could be to define a “processor assembly” in the specification as an assembly that includes one or more processors, and then in the claims refer to steps that a “processor assembly” undertakes.

Image Source: Deposit Photos
Author: herminutomo
Image ID: 11948928 


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Join the Discussion

3 comments so far.

  • [Avatar for Pro Say]
    Pro Say
    November 7, 2023 01:43 pm

    Thanks for the very important analysis John.

    Two resultant thoughts:

    1. Keep those continuations coming . . .

    2. Whew! Thank goodness the CAFC is not inconsistent when it comes to 101 / eligibility.

    Thank goodness indeed.

  • [Avatar for Addy]
    November 7, 2023 12:14 pm

    While I like that you pointed to the differences between Finjan and ABS in the “Practice Pointers,” given that there are clear differences between the facts of these two cases hardly makes them “Irreconcilable Differences…”.

  • [Avatar for Anon]
    November 7, 2023 10:25 am

    A note of caution vis a vis processor assembly is that if computing is distributed, you may well run into an issue of lacking a single infringer.