Wednesday, November 25, 2015

CAFC in Straight Path IP Group addresses the meaning of the word "is"

The CAFC wrote of the Straight Path PTAB decision:

Straight Path IP Group, Inc. owns U.S. Patent No.
6,108,704, entitled “Point-to-Point Internet Protocol,”
which describes certain protocols for establishing communication
links through a network. On a petition for inter
partes review filed by Sipnet EU S.R.O., the Patent Trial
and Appeal Board cancelled claims 1–7 and 32–42 of the
’704 patent based on determinations of anticipation and
obviousness. Sipnet EU S.R.O. v. Straight Path IP Group,
Inc., IPR 2013-246, 2014 WL 5144564 (PTAB Oct. 9,
2014). We now reject a claim construction on which the
Board relied for its decision. We reverse the Board decision,
and we remand for further proceedings under the
correct construction.


As to the meaning of the word "is" -->

The Board said nothing that either recognizes or disputes
the plain present-tense meaning of the claim language
on its face.
Indeed, the Board’s construction—
“active and on-line at registration,” Sipnet, 2014 WL
5144564, at *4 (emphasis added)—implicitly recognizes
that being online is a status that can change over time:
having the status “at registration” is having it at a particular
time. The query required by the claim language asks
if the callee “is” online, which is a question about the
status at the time of the query.
But the Board did not
address the facially clear meaning, instead turning immediately
to the specification.

Sipnet does much the same thing. Sipnet repeatedly
recognizes and stresses the difference between “past
online status” and “current online status,” the latter being
“opposed to the past status at registration.” Sipnet Br. at
21 (emphases in original); see id. at 8–9. Yet Sipnet offers
no argument that, as a matter of plain meaning, the claim
language “is” calls for anything but present-status information.
Nor does it point to anything in other claim
language that contradicts that plain meaning. Like the
Board, Sipnet relies entirely on the specification.
When claim language has as plain a meaning on an
issue as the language does here, leaving no genuine
uncertainties on interpretive questions relevant to the
case, it is particularly difficult to conclude that the specification
reasonably supports a different meaning. The
specification plays a more limited role than in the common
situation where claim terms are uncertain in meaning
in relevant respects. T

A claim:

Claim 1 of the ’704 patent is representative of the asserted
1. A computer program product for use with a
computer system, the computer system executing
a first process and operatively connectable to a
second process and a server over a computer network,
the computer program product comprising:
a computer usable medium having program
code embodied in the medium, the program
code comprising:
program code for transmitting to the server a
network protocol address received by the
first process following connection to the
computer network;
program code for transmitting, to the server,
a query as to whether the second process is
connected to computer network;
program code for receiving a network protocol
address of the second process from the server,
when the second process is connected to
the computer network; and
program code, responsive to the network protocol
address of the second process, for establishing
a point-to-point communication
link between the first process and the second
process over the computer network.

Not "computer implemented" but a computer program product!

link to case:

Note also:

One final point about this claim-construction issue:
Sipnet suggests in various ways that the specification
does not adequately describe or enable the systems or
processes involving a query about current connection
status under Straight Path’s claim construction. But
written-description and enablement challenges were not,
and could not have been, part of the inter partes review
that is now before us. See 35 U.S.C. § 311(b) (limiting
challenges to prior-art challenges). Such challenges
involve bottom-line or subsidiary factual issues that have
not been litigated or adjudicated.


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