District Judge Dissents from CAFC Ruling for Amazon, Citing Claim Construction ‘Rabbit Hole’

On Friday, the U.S. Court of Appeals for the Federal Circuit issued a ruling in AlterWAN, Inc. v. Amazon.com, Inc. affirming a stipulated final judgment of noninfringement entered by the District of Delaware and dismissing AlterWAN’s challenges to the district court’s construction of claims directed to wide area network (WAN) implementation. Dissenting to the majority opinion was U.S. District Judge Arun Subramanian, sitting by designation from the Southern District of New York, who took issue with the majority’s judgment resting on non-claim terms inferred as limitations from vague specification language and irrelevant prosecution history.

The present ruling marks the second time that the Federal Circuit has ruled on AlterWAN’s challenge to the district court’s construction of claim terms from U.S. Patent No. 8595478, Wide Area Network With High Quality of Service. In its 2023 precedential ruling in AlterWAN I, the Federal Circuit vacated the initial noninfringement stipulation as it didn’t contain sufficient detail as to which claims of the ‘478 patent were at issue, and remanded for revisions to the construction of “non-blocking bandwidth” in light of the term effectively requiring the impossible.

On remand, the district court retained the construction of claim term “cooperating service provider” to mean “service provider that agrees to provide non-blocking bandwidth,” and reconstrued “non-blocking bandwidth” to mean “bandwidth that will always be available and will always be sufficient while the network is able to transmit data.” While the first noninfringement judgment was premised on Amazon Web Services’ failure to provide service when the Internet goes down following a catastrophic event, the changed claim construction on remand led the parties to stipulate to new noninfringement reasoning based on Amazon’s failure to provide service during mundane network failures.

Prosecution Conduct Shows “Non-Blocking Bandwidth” Part of Crux of the Invention

Agreeing with the district court’s construction of “cooperating service provider,” the Federal Circuit majority found that construction supported by intrinsic evidence. That term was introduced into the ‘478 patent more than a decade after the patent’s effective filing date and does not appear in its specification. However, turning to the ‘478 patent’s prosecution history, the Federal Circuit noted patentee conduct underscoring that the “crux of the invention” was that prioritized traffic could be routed to “cooperating service providers” making a special provision of bandwidth “prearranged for blocked bandwidth.” In a footnote, the Federal Circuit majority agreed with the district court’s decision to consider the “blocked bandwidth” prosecution statement to be a reference to the “non-blocking bandwidth” found in the ‘478 patent’s specification.

In rejecting AlterWAN’s arguments for construing the claim term according to its ordinary meaning, the Federal Circuit further acknowledged strong emphasis on the provider’s guarantee of bandwidth within the patent’s summary as well as in patentee statements regarding prioritized traffic routing made during prosecution of the parent patent to the ‘478 patent. This intrinsic evidence overcame AlterWAN’s challenge based on separate bandwidth requirements from dependent claims, which the Federal Circuit said do not necessarily conflict with the non-blocking bandwidth requirement. The panel majority also found no different meaning between “participating” and “cooperating” service providers, noting several instances in the intrinsic record where the patentee used those terms in reference to essentially the same concept.

The Federal Circuit also affirmed the district court’s revised construction of “non-blocking bandwidth.” While the district court’s construction leading to AlterWAN I would have required bandwidth while the Internet was down, the addition of the qualifying phrase “while the network is able to transmit data” allayed the CAFC’s previous concern. Here, because the ‘478 patent’s intrinsic record was ambiguous as to exceptions to a cooperating service provider’s obligation to provide non-blocking bandwidth, Amazon’s expert testimony provided adequate evidentiary support for the revised construction.

Affirming the district court’s noninfringement ruling, the Federal Circuit panel majority did not reach AlterWAN’s other argument on appeal that its damages expert was wrongly excluded.

Judge Subramanian: Majority Takes the Wrong Approach to Claim Construction

In his dissent, Judge Subramanian ultimately took umbrage with the majority’s construction of non-claim term “non-blocking bandwidth.” Because “cooperating service provider” is not contained within the specification, the normal course of action for the appellate court would be to use the term’s plain and ordinary meaning. Instead, Judge Subramanian argued that the Federal Circuit majority went “down the rabbit hole” of equating the “blocked bandwidth” term from prosecution statements with “non-blocking bandwidth” in the specification, which was then defined and imported into the construction of claim term “cooperating service providers” based on prosecution history statements having more to do with the simple concept of using link cost assessments to reduce transmission delays by resolving choices between cooperating service providers.

The majority’s decision appeared to seize upon the “blocked bandwidth” prosecution statements as an attempt to narrow the definition of “cooperating service provider,” but Judge Subramanian underscored that the statements were not made in an attempt to avoid patentability issues stemming from the data-handling capabilities of the providers. If anything, the ‘478 patent’s prosecution history undermines the majority’s position, for instance by clarifying that “high bandwidth” did not require the majority’s “always available, always sufficient, no matter what” absolutist reading.

According to Judge Subramanian, “[t]he majority appears to take the perceived advantages of the claimed invention as a whole and compress them into the definition of a single, ancillary term.” He further highlighted numerous claims from the ‘478 patent reflecting that some “cooperating service providers” would be excluded because they may not have sufficient bandwidth. Although the ‘478 patent is expired and has had a “tortured” litigation history, “these aren’t reasons to reach an incorrect, and fatal, construction of the patent’s claims,” he concluded.