“Each Field” Is Different from “Each of a Plurality of Fields”
October 16, 2003
Last Month at the Federal Circuit - November 2003
Judges: Rader (author), Newman, and Michel
In ResQNet.com, Inc. v. Lansa, Inc., No. 03-1163 (Fed. Cir. Oct. 16, 2003), the Federal Circuit affirmed-in-part and reversed-in-part the claim constructions of the asserted claims of U.S. Patent Nos. 5,530,961 (“the ‘961 patent”); 5,831,608 (“the ‘608 patent”); and 6,295,075 (“the ‘075 patent”) (collectively “the patents-insuit”), and remanded the case to the U.S. District Court for the Southern District of New York for further proceedings.
At issue in this case was computerscreen display-recognition technology. The ‘961 patent attempted to avoid problems with prior art designs by utilizing a display routine based upon an algorithm that recognized the screen by a layout and fields therein, not based solely upon a particular screen ID number. The ‘608 patent is a continuation-in-part of the ‘961 patent, and the ‘075 patent is independent of the ‘961 family of patents.
ResQNet.com, Inc. (“ResQNet”) sued Lansa, Inc. (“Lansa”) for infringement of claim 1 of the ‘961 patent, claim 1 of the ‘608 patent, and claim 1 of the ‘075 patent. After the district court issued its claim-construction order, the parties stipulated to noninfringement by Lansa to obtain review of the claim-construction rulings of a single phrase from each of the patents-in-suit by the Federal Circuit.
The Federal Circuit upheld the claim construction of the limitation “means for processing said information to generate a screen identification (“ID”) from said first image, said ID being generated as a function of the number, location and length of each field in said first image,” as recited in claim 1 of the ‘961 patent. The Federal Circuit noted that the district court had correctly identified the function and corresponding structure of this means-plusfunction limitation, and that the sole issue to be determined was whether the phrase “each field” meant that the algorithm must evaluate attributes of all fields or only some fields. The district court had found, and the Federal Circuit agreed, that “each field” meant that all fields must be evaluated. In finding that this construction was consistent with the specification, the Federal Circuit especially noted that, under this construction, the invention accomplished each listed advantage over the prior art, as described in the ‘961 patent specification. The Federal Circuit felt that this did not “run afoul of the general rule that limitations should not be imported from the specification based solely on overcoming problems with the prior art,” because the Applicant, during prosecution, distinguished certain prior art by arguing that the prior art did not resolve the problems identified in the specification.
Despite upholding the construction of claim 1 of the ‘961 patent, the Federal Circuit reversed the district court’s decision that the phrase “each of a plurality of fields” (claim 1 of the ‘608 patent) was synonymous with the phrase “each field” (claim 1 of the ‘961 patent). In particular, the Federal Circuit found that the recitation of “a plurality” was significantly different, requiring interpretation of claim 1 of the ‘608 patent without regard to the construction of claim 1 of the ‘961 patent. The Federal Circuit concluded that, consistent with the specification, the phrase “each of a plurality of fields” meant “each of at least two fields,” and settled on this construction because there was no clear and unmistakable disavowal of claim scope that would compel a different result.
Finally, the Federal Circuit also reversed the district court’s determination that the limitation “a plurality of specific screen identifying information,” as recited in claim 1 of the ‘075 patent, was synonymous with the “each field” and “each of a plurality of fields” limitations previously discussed. In particular, because the ‘075 patent does not share a genealogy with the other patents-in-suit, and because the limitations at issue were not identical in language, the Court construed “a plurality of specific screen identifying information” of claim 1 of the ‘075 patent anew. While it found that “plurality” meant “at least two,” consistent with its construction of claim 1 of the ‘608 patent, the Court declined to find that this claim required each or all of the plurality of information as it did with the previously discussed claim limitations. Specifically, because the specification of the ‘075 patent described “specific information,” which connoted “selected or particular information,” and emphasized that the specific algorithm used was “not critical” and “may” be of the type described in the ‘961 patent, the Federal Circuit found that “a plurality of specific information” did not mean “each” or “every” field as required by the ‘961 and ‘608 patents.