Fifth Generation Computer: another language of the claims case

Fifth Generation Computer, represented by DAVID B. TULCHIN,
Sullivan & Cromwell LLP , lost to IBM.

Within the decision:

We agree with IBM. Patent claims function to deline-
ate the precise scope of a claimed invention and to give
notice to the public, including potential competitors, of the
patentee’s right to exclude. Bicon, Inc. v. Straumann Co.,
441 F.3d 945, 950 (Fed. Cir. 2006); see also Interactive Gift
Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331
(Fed. Cir. 2001) (“In construing claims, the analytical
focus must begin and remain centered on the language of
the claims themselves, for it is that language that the
patentee chose to use to particularly point out and dis-
tinctly claim the subject matter which the patentee re-
gards as his invention.”) (quotation and alterations
omitted). This notice function would be undermined,
however, if courts construed claims so as to render char-
acteristics specifically described in those claims superflu-
ous. Bicon, 441 F.3d at 950. As such, we construe claims
to give effect to all of their terms.

Of incorporation by reference:

Fifth Generation’s proposed broader construction of
the disputed terms relies heavily on its argument that the
’024 patent incorporated the ’201 and ’540 patents by
reference and that a disclosure of subtrees in those earlier
patents supports such a construction. Whether, and to
what extent, material has been incorporated by reference
into a host document, is a question of law that we review
de novo. Adv. Display Sys., Inc. v. Kent State Univ., 212
F.3d 1272, 1283 (Fed. Cir. 2000). We agree with Fifth
Generation that the ’024 patent specification does not
need to expressly recite concepts disclosed in the earlier
Stolfo patents in order to incorporate them into the later
patent specification. The clear incorporation by reference
suffices to serve that purpose here. See Zenon Envtl., Inc.
v. U.S. Filter Corp., 506 F.3d 1370, 1378 (Fed. Cir. 2007)
(“Incorporation by reference provides a method for inte-
grating material from various documents into a host
document . . . by citing such material in a manner that
makes clear that the material is effectively part of the
host document as if it were explicitly contained therein.”)

BUT

However, we do not agree with Fifth Generation
that every concept of the prior inventions is necessarily
imported into every claim of the later patent. See Modine
Mfg. Co. v. U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1553
(Fed. Cir. 1996) (“[I]ncorporation by reference does not
convert the invention of the incorporated patent into the
invention of the host patent.”), overruled on other grounds
by Festo Corp. v. Shoketsu Kinzoku Kabushiki Co., Ltd.,
234 F.3d 558 (Fed. Cir. 2000). Here, the ’024 patent
claims are clear in claiming a complete computer system,
including specific functionality of the single root bus
controller within that computer system. In light of such
clear claim language, it is inappropriate to look to the
incorporated references to arrive at a stretched reading of
those claim limitations. Interactive Gift Express, 256 F.3d
at 1331 (“If the claim language is clear on its face, then
our consideration of the rest of the intrinsic evidence is
restricted to determining if a deviation from the clear
language of the claims is specified.”); see also Unique
Concepts, Inc. v. Brown, 939 F.2d 1558, 1563 (Fed. Cir.
1991) (“When the language of a claim is clear, as here,
and a different interpretation would render meaningless
express claim limitations, we do not resort to spinterpretation
based on claims not granted.”).

Of "employed by the same company" matters:

There-
fore, under Fifth Generation’s own assertion, at the time
of the filing of the ’024 patent, its inventors had claimed
subtrees, at least as part of a larger binary tree computer
system, in the earlier patents, and yet the ’024 patent
inventor, employed by the same company, did not do so in
the later patent, thereby demonstrating that such sys-
tems are not within the ’024 patent claims’ scope. See
Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1347
(Fed. Cir. 2009) (citing Phillips, 415 F.3d at 1314) (hold-
ing that the claims at issue did not require the use of a
“key” where the inventor had omitted the requirement in
those claims while explicitly reciting it in other claims,
thereby demonstrating an intent to claim a different
scope); see also Abbott Labs. v. Sandoz, Inc., 566 F.3d
1282, 1297 (Fed. Cir. 2009) (holding that a chemical
formulation that the applicants could have claimed given
that it appeared in their priority application, but chose
not to, falls outside the scope, literal or equivalent, of the claim).


**Of historical interest

Fifth generation of computers (1984-1990)