In drafting patent applications, it may be useful to broaden the language by using words such as “preferred” and to use claim language such as “substantially” or words of similar import. Preferred connotes that the embodiment or aspect being described is merely preferred but other examples are also contemplated. Also, the word “substantially” in the claims broadens the claims to include other variants of the subject being modified. The following case illustrates use of these patent drafting techniques.
The patented technology at issue in Verderi, LLC v. Google, Inc. (Fed. Cir. March 14, 2014) was directed to providing synthesized images of a geographic area, through which a user may then visually navigate via a computer. An example of this type of technology is Google’s Street View. In Google’s application, the Internet user is able to pan left, right, up and down to view the surrounding scenery.
Verderi (patent owner) sued Google for patent infringement of the claims of U.S. Pat. No. 7239760; 7577316; 7805025 and 7813596 against Google’s Street View. The determination of whether Google’s Street View infringed the claims of Verderi’s patents hinged on whether the claim language “substantially elevations” means vertically flat depictions of the objects, or whether “substantially elevations” could also include curved or spherical depictions. The District Court construed the phrase as excluding curved or spherical depictions of the objects, and since the depictions in Google’s Street View provided spherical depictions, the District Court granted summary judgment in favor of Google, finding that Google’s Street View does not infringe the claims of Verderi’s patents.
On appeal, the Federal Circuit reversed because of an error in construing the claim language by the District Court. Broadly speaking, the specification and the prosecution history of the patents at issue allowed for the possibility of curved or spherical depictions. Also, the patent owner did not clearly disavow inclusion of curved or spherical depictions views being substantially elevations.
For example, the Federal Circuit reviewed the reasons for the District Court’s claim construction for substantially elevation. The District Court heavily relied on the technical architectural definition for elevation view which is a non-perspective, two dimensional views depicted as if the viewer were simultaneously positioned 90 degrees (along the horizontal plane) from every point of the object. However, the Federal Circuit faulted the District Court for not considering the intrinsic evidence which includes the claim language itself. The District Court failed to consider and give meaning to the adverb “substantially” which modifies “elevations”.
The claim language being construed was “substantially elevations”. A claim construction that gives meaning to all of the terms is preferable. In this case, the Federal Circuit reasoned that “substantially” broadens the term “elevation” to include curved or spherical depictions. The specification provided various preferable embodiments which are created column-by-column but did not say that this is the only way to create the composite images. The specification contemplated use of fish eye lens which provides curved or spherical depictions. Also, the specification and prosecution history does not clearly disavow curved or spherical images.
For these reasons, the Federal Circuit reversed the District Court’s claim construction, vacated its judgment of non-infringement and remanded for further consideration.
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