March 2014
Ambiguity as to Whether a Patentee Intended to Depart from the Ordinary Meaning of a Term Does Not Indicate a Clear Intent to Depart
| Judges: Moore, Schall (author), Reyna |
| [Appealed from D. Del., Chief Judge Sleet] |
In Starhome GmbH v. AT&T Mobility LLC, No. 12-1694 (Fed. Cir. Feb. 24, 2014), the Federal Circuit affirmed the district court’s SJ of noninfringement.
Plaintiff Starhome GmbH (“Starhome”) sued Defendants AT&T Mobility LLC, Roamware, Inc., and
T-Mobile USA, Inc. (collectively “AT&T”) for infringement of U.S. Patent No. 6,920,487 (“the ’487 patent”).
The ’487 patent is directed to a system and method of improving the functionality of phone services for users in a roaming telephone network by use of an “intelligent gateway” that assists in translating a dialing sequence while in the roaming network. Starhome alleged that AT&T’s network platform, which runs applications that allow mobile-network operators to translate numbers dialed by roaming cell-phone users, infringed the ’487 patent. AT&T’s network platform does not connect to an external packet-switch network or other external network.
“At best, Figure 2 inserts ambiguity as to whether the patentees intended to depart from the ordinary meaning of ‘intelligent gateway.’ But such ambiguity does not rise to the level of the clear intent our case law requires.” Slip op. at 12-13 (citing Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)).
On appeal, the Federal Circuit affirmed the district court’s construction of the claim term “intelligent gateway” and judgment of noninfringement. The Court first noted that, as a general rule, the words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history. The Court noted that there are only two exceptions to this general rule: (1) when the patentee sets out a definition and acts as his own lexicographer; or (2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution. The Court also noted that dictionaries and treatises are often useful for claim construction, and can be used as long as the dictionary definition does not contradict with any definition found or ascertained by the patent documents.
The Court then considered the district court’s construction of “gateway.” The Court noted that the term “gateway” had a well-understood meaning in the art at the time the patentees filed the application that led to the ’487 patent, and cited technical dictionaries to show that one of ordinary skill in the art would have understood “gateway” to be a connection between different networks. And in the context of the
’487 patent, the Court agreed with AT&T that the ordinary meaning of “gateway,” which refers to a connection between different networks, should control. The Court held that the usage of the claimed “intelligent gateway” term in the specification does not alter the ordinary meaning of “gateway” as understood by one of ordinary skill in the art, since the gateway is intelligent by virtue of the fact that it includes a database of information and is adapted to perform numerous functions.
The Court also held that the ordinary meaning is consistent with the specification, which describes a global packet-switch network connecting mobile networks via intelligent gateways. The Court also held that the figure in the ’487 patent showing a gateway connected solely to an internal network does not constitute a separate embodiment, as the specification explains that the figure is a simplified drawing of another embodiment. The Court noted that even if that figure inserted ambiguity as to whether Starhome intended to have the meaning of the word “intelligent gateway” depart from its ordinary meaning, the ambiguity does not rise to the level of express intent to impart a novel meaning to “intelligent gateway.”
The Court also found that the doctrine of claim differentiation is not controlling in this case. As the Court noted, claim differentiation is “a rule of thumb that does not trump the clear import of the specification.” Slip op. at 13 (quoting Edwards Lifesciences LLC v. Cook, Inc., 582 F.3d 1322, 1332 (Fed. Cir. 2009)). The Court noted that the district court’s construction of “intelligent gateway” does not create inconsistency under the doctrine of claim differentiation because claims 1 and 47 of the ’487 patent, which recite a gateway connected to a packet-switch network, are only narrower in scope than asserted claims 10 and 40. The Court found that such a construction neither imports limitations from one claim to another nor renders any claims redundant.
Accordingly, the Court affirmed the district court’s claim construction, as well as the district court’s SJ of noninfringement.
