In GPNE Corp. v. Apple Inc. (Fed. Cir. August 1, 2016), the written description was presented in a way that narrowly described the invention, and thus the court ascribed a narrow meaning to the terms of the claims and found no patent infringement liability against the defendant. Although the claims define the metes and bounds of what is protected under a patent, the terms of the claims of the patent are interpreted in light of the patent written description. As such, if the same term is used in two different patents but are used in a different manner to describe the invention, they can be interpreted to have a different scope. This case illustrates the importance of thinking through the language used in the written description.
GPNE (patent owner) sued Apple (accused infringer) for patent infringement based on the claims of U.S. Patent Numbers 7,570,954 and 7,792,492. The patent covered a two-way paging system where paging devices were capable of not only receiving messages but also sending messages back in response. Unfortunately,
Written description used to resolve ambiguous claim term
The claims of the patents used the word “node” in reference to various pagers and paging units. However, the word “node” was not used in the written description except for a brief mention in the abstract section of the patent. However, GPNE conceded that the written description consistently referred to nodes as pagers. But, GPNE wanted to have “node” construed more broadly and not limited to pagers only. Nevertheless, the court construed the word “node” as a pager. By pagers, the court meant those devices used in the early 1990s where people would carry a device that received a notification that a particular phone number was requesting a call back. The phone number would show up visually on the person’s pager. See picture of pager below.
GPNE wanted a broader meaning associated with the word “node.” The most likely reason was that this case was to be decided by jury trial and GPNE expected that Apple would put forth a significant amount of evidence for the 1990’s style pagers so that the jury might associate the term “node” with those old technology pagers and not a smart phone as was used in Apple’s accused infringing device. But the Appellate Court affirmed the District Court’s claim construction.
In the Appeal, GPNE tried to broaden up the meaning for node by asserting that the patent contained evidence that “node” should be construed more broadly. For example, GPNE pointed to the written description describing the node as a device that operates on a sophisticated data network and contains complex features like image displays and a writing pad. Nevertheless, the Court found that the patent “repeatedly and exclusively” used these words to refer to the pager devices. The Appellate Court also found that the district court’s description of “node” as being a pager was not inconsistent with the way that the specification described the features of the pager.
Expressly define the term in the written description
The example that GPNE brought forth to show that the patent’s specification utilized the word “node” as being broader than just a pager was a type of implicit interpretation of the patent’s specification. It may have been more beneficial to expressly recite in the brief summary section or the detailed description section that the pager may have certain features and that the pager “includes and is not limited to [insert specific examples, features and potential definitions].” For example, here, the specification could have included a statement that the node includes and is not limited to a smart phone, touch sensitive display input device and a tablet. Part of the problem that the patent owner had in litigating the patent was that the patent owner was trying to make the patent which was filed a long time ago cover technology that was not around when the patent application was originally filed. As such, the patent applicant most likely would not have had the foresight to include a broadening statement like the one above identifying a smart phone, touch sensitive display input device and a table. Nevertheless, it is this type of language that could mitigate this type of issue.
Expressly define the term in a dependent claim
The patents at issue included a definition of “node” in a dependent claim. In particular, Claim 44 of the ‘492 Patent was asserted against Apple and Claims 19 and 22 of the ‘954 Patent were asserted against Apple.
In the ‘492 Patent, dependent claims 5, 17, 24, 31, 40, 48, 58 and 67 all define the first node as further comprising a touch sensitive display input device. In the ‘954 Patent, dependent claims 17, 20, 26, 31 and 36 all define the first node as further comprising a touch sensitive display input device. Despite the existence of these claims, the court and the appellant did not raise this issue with the court. For one reason or another, the dependent claims were not used to broaden the definition of node in the independent claims.
Nevertheless, although the dependent claims which defined “node” wasn’t useful here in this case, the patent applicant may still want to define claim terms in a dependent claim. For example, an independent claim may recite the word “node” and a dependent claim may recite that the node is [fill in the blank]. In this way, the term is defined in the claims and may pose less of a claim construction issue during litigation.
Summation statements of the invention are limiting
The District Court also described the invention as a two-way paging system which operates independently from a telephone system for wireless data communication between users. This type of description of the “invention” may limit patent protection afforded under the patent because the defendants might be able to avoid infringement by making a system that is dependent on a telephone system. GPNE did not want the invention to be described in this narrow way. Nevertheless, the Appellate Court affirmed the District Court’s equivocation of the word “node” with “pager” because of a single sentence in the specification that stated:
“Thus, the invention provides a two-way paging system which operates independently from a telephone system for wireless data communication between users.”
The Court described this single sentence as a summation sentence which describes the invention as a whole, and thus limited the scope of the invention.
Be careful on using the word “invention” in the specification
In preparing the written description, there may be a need to utilize the word invention. But in most instances, the written description of the patent application can be prepared without using the word “invention.” For example, if the invention is directed to a unique type of pen, the specification can merely state that the pen has a unique feature. The specification does not need to state that the invention has a unique feature. Merely replacing the word “invention” with apparatus or process also works in most instances without taking away from the meaning of the sentences and paragraphs. By not utilizing the word “invention” in the patent application, it mitigates the potential that a court might construe any single statement as a summation statement of THE invention which may narrow interpretation of the term in determining the scope of patent protection.
The claimed invention or the invention as recited in the claims
One way to discuss the invention is to describe the “invention” as the “claimed invention” or the invention as recited in the claims. This is useful during the examination stage where the invention is being described in the remarks section of a response to an Office Action and the claims may change over time. This way of referring to the claimed invention also provides more of a dynamic understanding of the “invention” being sought to be patented. As the claims change, so does the claimed invention or the invention recited in the claims. This way of discussing the claimed invention may mitigate a narrow interpretation of the claims to the invention.
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