March 13, 2020
Prosecution History Doesn’t Have to Rise to the Level of Disclaimer to Inform the meaning of the Disputed Claim Term
In Personalized Media Communications, LLC, v. Apple Inc., [2018-1936] (March 13, 2020), the Federal Circuit reversed the Board’s construction of a claim term of U.S. Patent No. 8,191,091 on methods for enhancing broadcast communications, vacating the anticipation and obviousness determinations of the corresponding claims, and affirmed the remainder of the Board’s determinations of anticipation and obviousness.
The Federal Circuit noted that the prosecution history, in particular, may be critical in interpreting disputed claim terms because it contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims. Accordingly, even where prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.
At issue was the meaning of “an encrypted digital information transmission including encrypted information,” and in particular whether this term is limited to digital information or can also include analog information. The Federal Circuit began its analysis with the claim language, noting that the claims use the adjective “digital” to describe the “information transmission,” thus supporting the view that the information is, in fact, digital. On the other hand, the Federal Circuit added, the claims do not say “entirely digital.”
Although the Federal Circuit agreed that with the Board that the specification’s broad definition of “programming” could encompass analog signals, it did not agree that it necessarily requires them. Instead, the definition is largely agnostic to the particular technology employed.
The Federal Circuit turned to the specification, finding some relevant statements, but noting that they are not definitional; instead, they are merely illustrations that use open-ended, permissive phrases such as “usually,” “for example,” and “with capacity for.” When considered in the context of the more than 280 columns of text in the specification of the ’091 patent, these two passages fall far short of defining the relevant terms through repeated and consistent use.
Finally, the Federal Circuit turned to the prosecution history. While the Board found the prosecution history inconclusive, the Federal Circuit disagreed, noting that even where prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction. The Federal Circuit said an applicant’s repeated and consistent remarks during prosecution can define a claim term — especially where, as here, there is no plain or ordinary meaning to the claim term and the specification provides no clear interpretation.
The Federal Circuit found that the Board erred by effectively requiring the prosecution history evidence to rise to the level of a disclaimer in order to inform the meaning of the disputed claim term, adding the prosecution history provides persuasive evidence that informs the meaning of the disputed claim phrase and addresses an ambiguity otherwise left unresolved by the claims and specification.
Because the Federal Circuit concluded that the disputed claim term was limited to all-digital signals, it reversed the Board’s unpatentability determination for those claims.