August 1, 2016

Detailed Analysis of Specification and Prosecution History Revealed Meaning of Claims

In WI-LAN USA, INC., v. Apple Inc., [2015-1256] (August 1, 2016) the Federal Circuit affirmed summary judgment of noninfringement of U.S. Patent Nos. 8,311,040 and 8,315,640.  At issue on appeal were two issues of claim construction: “specified connection” in the ‘040 patent, and “UL connection” in the ‘640 patent.

The parties disputed whether the term “specified connection” excludes embodiments where an intermediary device can maintain only one specified connection.  The Federal Circuit found the claims inconclusive, and turned to the specification, whose consistent descriptions of multiple specified connections, suggested that the patent’s claims do not encompass an embodiment contrary to these descriptions.  The Federal Circuit said that consistent use of a term in a particular way in the specification can inform the proper construction of that term.  Here, the Federal Circuit found that the specification’s consistent references to multiple “specified connections” to weigh in favor of a construction excluding embodiments where the intermediary node is capable of maintaining only one “specified connection.”  The Federal Circuit also noted that the claims discussed allocating bandwidth, which suggested multiple connections over which the bandwidth is distributed.

The parties disputed whether the term UL connection meant a connection between a user device and its intermediary node or the connection between an intermediary node and its base station.  The Federal Circuit found that the specification never used the term “UL connections.”  Turning to the specification as a whole, the Federal Circuit found that the context required it to construe UL connection to refer to the intermediary node’s connections with user devices, not the base station, for three reasons.  IT was the only construction that squared with: (1) the scheme the patent sets out where the base station allocates bandwidth to its intermediary-node connections and the intermediary nodes allocate bandwidth to their user connections, (2) the network architecture the specification describes, and (3) representations Wi-LAN made in prosecution.

Because it affirmed both constructions against Wi-LAN’s challenges, the Federal Circuit also affirmed the district court’s grant of summary judgment of noninfringement.