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Claims Not Limited to the Two Networks in Specification

Posted by James Juo | Sep 08, 2023 | 0 Comments

In patent claim construction, the words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).

But a claim term's plain and ordinary meaning will not apply “1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Although a patent's specification often describes very specific embodiments of the invention, the Federal Circuit has “repeatedly warned against confining the claims to those embodiments.” Phillips, 415 F.3d at 1323.

Construing “Connection Rejection Message”

The Federal Circuit recently construed the claim term “connection rejection message” in Sisvel Int'l S.A. v. Sierra Wireless, Inc., Nos. 2022-1387, __ F.4th __ (Fed. Cir. Sept. 1, 2023).

The patents-in-suit were U.S. Patent Nos. 7,433,698 and 8,364,196 which disclosed methods and systems for exchanging frequency information between a mobile station and a mobile switching center to facilitate switching a mobile device's connection point within a cellular network, namely, a Global System for Mobile Communication (“GSM”) or Universal
Mobile Telecommunications System (“UMTS”) network.

In an inter partes review (“IPR”), the Patent Trial and Appeal Board (“PTAB”) issued final written decisions concluding that the claims were unpatentable over prior art based on a construction of “connection rejection message” that was not limited to “a message from a GSM or UMTS telecommunications network rejecting a connection request from a mobile station.”

On appeal, the Federal Circuit affirmed that the plain and ordinary meaning of “connection rejection message” is “a message that rejects a connection” which was not restricted the term only to GSM or UMTS networks.

Although all of the embodiments disclosed in the specification were directed to UMTS or GSM networks, the specification also stated that the invention could work “in many different cellular telecommunications systems” of which UMTS and GMS are two examples. Although the specification only disclosed the two networks, the Court declined to confine the claims only to the disclosed embodiments.

Limiting the claim term “connection rejection message” to “a message from a GSM or UMTS telecommunications network rejecting a connection request from a mobile station” would improperly limit the claims to the disclosed GSM and UMTS embodiments.

            Here, the intrinsic evidence provides no persuasive basis to limit the claims to any particular cellular networks. To the contrary, the claim language itself is not so limited. See, e.g., '698 patent col. 8 ll. 34-43 (claim preamble reciting “channel reselection method in a mobile communication means of a cellular telecommunication system”); '196 patent col. 8 ll. 2-12 (claim limitation directed to “receiv[ing] a connection rejection message in a mobile cellular network”). The specification, while only expressly disclosing embodiments in a UMTS or GSM network, also broadly teaches:

[t]he invention is applicable in many different cellular telecommunication systems, such as the UMTS system or the GSM system. The invention is applicable in any such cellular telecommunication system, in which the cellular telecommunication network sends a rejection message as a response to a connection setup request from a mobile station, if the network is unable to provide the requested connection.

'698 patent col. 7 ll. 40-46 (emphasis added); see also '196 patent col. 7 ll. 41-47 (same).

While the cellular telecommunication system can be a UMTS system or GSM system; the patent did not require that the cellular telecommunication system must be a UMTS system or GSM system.

As a result, the Court affirmed that the challenged claims of the '698 patent and '196 patent are unpatentable as anticipated and/or obvious in view of certain prior art.

Professor Crouch noted that “it often makes sense to include . . . dependent claims that narrow aspects of the claim to the same level provided by the embodiments.”

Broadening Amendments Impermissible in IPR Proceedings

Also on appeal was the issue of the PTAB's denial of a contingent motion to amend claims of the ‘698 patent. The PTAB found the proposed substitute claims impermissibly broadened the scope of the original claims by changing “based at least in part on” to merely “using” in the claims regarding information from the connection rejection message. The AIA explicitly prohibits broadening amendments in IPR proceedings, where 35 U.S.C. § 316(d)(3) states that amended claims “may not enlarge the scope of the claims of the patent.” Similarly, 37 C.F.R. § 42.121(a)(2)(ii) provides that a motion to amend may be denied if it seeks to enlarge the scope of the claims.

In response to the patent owner's contention that when all limitations were considered together, the substitute claims were narrower overall; the Federal Circuit noted that a claim is broadened if it is broader in any respect, even if narrowed in other respects.

            In the context of these claims, “using” is broader than “based on.” Whereas the original claim language required that the value in a new connection setup attempt be at least in some respect impacted by (i.e., “based” on) the frequency parameter, the substitute claim removes this requirement. The removal of a claim requirement can broaden the resulting amended claim, and that is what has occurred here. See Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001) (“A reissue claim that does not include a limitation present in the original patent claims is broader in that respect.”) (internal quotation marks omitted).

* * *

[I]f a substitute claim “is broader in any respect [it] is considered to be broader than the original claim[] even though it may be narrower in other respects.” Hockerson-Halberstadt, 183 F.3d at 1374 (emphasis added); see also 37 C.F.R. § 1.175(b) (“A claim is a broadened claim if the claim is broadened in any respect.”).

Thus, the claims were broadened because changing “based on” to “using” removed the requirement that the frequency parameter impact the value.

The patent attorneys at Thomas P. Howard, LLC enforce patents and defend against infringement in litigation nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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