CAFC Vacated District Court Claim Construction Relying on Alleged Prosecution Disavowal and Affirmed Indefiniteness Determination

In Intellectual Ventures I LLC v. T-Mobile USA, Inc., the Federal Circuit vacated and remanded the district court’s grant of summary judgment relying on an erroneous claim construction, and affirmed its indefiniteness determination.

First, the district court construed “application-aware resource allocator” (and a similar limitation) as limited to one that allocates resources using information received from an “application layer 7.” The court reasoned its construction was supported by statements made during prosecution allegedly disavowing claim scope.

The Federal Circuit disagreed. According to the Court, the plain and ordinary meaning broadly includes “application-aware resource allocator[s]” that allocate using information received from any of a “network layer 3,” “transport layer 4,” or “application layer 7.” This broader construction was supported by the specification and avoided rendering dependent claims meaningless. The Court also rejected the district court’s reliance on prosecution disclaimer, finding the patentee’s statements were subject to more than one reasonable interpretation and therefore did not meet the “exacting” standard for disclaimer.

Second, the district court determined that the limitation “allocating means . . . so as to optimize end use application IP QoS requirements” was indefinite because the patent itself described the “QoS” function as subjective, “vary[ing] from user to user based on individual preferences.” The court did not address arguments regarding corresponding structure for the means-plus-function limitation. The Federal Circuit agreed, reasoning the “QoS requirements are entirely subjective and user-defined,” and, because function was indefinite, there was no need to assess structure.