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Board’s Broad Claim Construction Affirmed, Claims Anticipated

May 13, 2004

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Last Month at the Federal Circuit - June/July 2004

Judges: Bryson (author), Rader, and Gajarsa

In In re American Academy of Science Tech Center, No. 03-1530 (Fed. Cir. May 13, 2004), the Federal Circuit affirmed a decision of the Board upholding an Examiner’s reexamination rejection of several claims of U.S. Patent No. 4,714,989 (“the ‘989 patent”) assigned to American Academy of Science Tech Center (“American Academy”).

The ‘989 patent is directed to a dataprocessing network that distributes processing of user applications among several computers. The user applications run on user computers that connect to a database that resides on a separate dedicated database computer. In the preferred embodiment described in the ‘989 patent specification, to access the database, the user application calls a database-simulator program running on the user computer as though it were calling the database directly.

The primary issue on appeal was the construction of the claim terms “user computer” and “indirectly issuing a database call.” The Board broadly construed the term “user computer” to encompass both multiuser mainframe computers and single- user personal computers, and broadly construed the term “indirectly issuing a database call” to require that a request from the host computer go through some other component before it is sent to the database. Based on these constructions, the Board affirmed the Examiner’s rejection of the ‘989 patent claims as anticipated by or obvious in view of four prior art references that disclosed mainframe computers running user applications and communicating with a database computer to access data stored in a database on the database computer.

On appeal, American Academy challenged the Board’s broad claim construction. American Academy first argued that the claim term “user computer” should be limited to refer only to a single-user computer, excluding multiuser mainframes, because the specification makes clear that the claim language should be interpreted more narrowly than the ordinary meaning of the claim language would suggest. In support, American Academy noted that the specification points out deficiencies with using multiuser mainframe computers to run user applications and refers to a user computer as “dedicated to servicing a user” in the singular. American Academy further argued that reading “user computer” to encompass mainframes would vitiate the word “user” from the term. American Academy also cited the declarations of its expert as evidence that one of ordinary skill in the art would understand “user computer” to mean a computer dedicated to a single user.

In considering this challenge, the Federal Circuit noted that during examination and reexamination, claims are to be given their broadest reasonable interpretation consistent with the specification. The Federal Circuit agreed with the Board that the description in the ‘989 patent specification did not preclude a mainframe from serving as the “user computer” of the invention. The Federal Circuit found that although some of the language of the specification, when viewed in isolation, might lead to a construction of “user computer” as a computer that serves only a single user, the specification as a whole suggests a construction that is not so narrow. The Federal Circuit concluded that the Board’s construction of “user computer” as including multiuser computers, such as mainframes, was not unreasonably broad. The Federal Circuit also noted that the Board had broad discretion as to the weight given to declarations offered during prosecution and was entitled to discount the opinions of American Academy’s expert.

American Academy also challenged on appeal the Board’s construction of the claim term “indirectly issuing a database call.” American Academy argued that the ‘989 patent specification limits this term to “a user computer application program issuing a call for data as though from resident storage, coupled with an intermediate step redirecting the call to the remote data center computer” because the specification describes a database simulator that performs this function as the preferred embodiment. American Academy also provided declarations from its expert as further evidence in support of its construction of this term.

The Federal Circuit found that the ‘989 patent specification did not limit “indirectly issuing” to the construction proposed by American Academy because the specification makes clear that the database simulator is just a preferred embodiment among a variety of conventional protocol procedures. The Federal Circuit concluded that the Board properly used the broadest reasonable construction of the “indirectly issuing” claim term in rejecting the ‘989 patent claims.

American Academy did not challenge whether, under the Board’s claim construction, substantial evidence supported the Board’s finding of anticipation for the ‘989 patent claims. Consequently, the Federal Circuit also affirmed the Board’s finding of anticipation.