Intellectual Ventures wins claim construction appeal at CAFC

Intellectual Ventures won its appeal on claim construction at the CAFC:


Intellectual Ventures I LLC (“IV”) appeals from a
grant of summary judgment by the U.S. District Court for
the District of Delaware that T-Mobile USA, Inc., TMobile
US, Inc., Ericsson Inc., Telefonaktiebolaget LM
Ericsson, and United States Cellular Corporation (collectively,
“T-Mobile”) have not infringed U.S. Patent
No. 6,640,248. Because we hold that the district court’s
grant of summary judgment resulted from an erroneous
claim construction, we vacate and remand. We affirm the
district court’s determination regarding indefiniteness.



Teva is cited:


Because it is based solely upon the intrinsic record,
we review the district court’s claim constructions de novo.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841–42 (2015). We review a determination of indefiniteness
de novo, though we review any factual findings about
extrinsic evidence for clear error. BASF Corp. v. Johnson
Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). We
review the district court’s grant of summary judgment
under the law of the regional circuit, here the Third
Circuit, which performs de novo review. Akzo Nobel
Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1338
(Fed. Cir. 2016).



Of IV's argument:


IV argues the district court erred in construing “application-aware
resource allocator” in claim 1 and “application-aware
media access control (MAC) layer” in claim 20
as a resource allocator that “has knowledge of the type of
data application and further takes into account, when
allocating bandwidth, information about applications at
[OSI] application layer 7.” According to IV, application
awareness requires only that the resource allocator allocate
resources based on application type, which can be
discerned using information obtained from any of network
layer 3, transport layer 4, or application layer 7.
We agree. “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.” Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012). The plain language of the claims, the
specification, and the prosecution history all support IV’s
construction.




T-Mobile argued "clear disavowal" of claim scope:



Since “[i]t is the claims that define the metes and bounds
of the patentee’s invention,” “[t]he patentee is free to
choose a broad term and expect to obtain the full scope of
its plain and ordinary meaning unless the patentee explicitly
. . . disavows its full scope.” Thorner, 669 F.3d at
1367 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc)). Disavowal is an “exacting”
standard under which it must be established that the
patentee “demonstrate[d] an intent to deviate from the
ordinary and accustomed meaning of a claim term”
through “expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.” Epistar
Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1334 (Fed.
Cir. 2009).

The statements in the prosecution history T-Mobile
cites do not meet this exacting standard.

(...)

The patentee’s reference to Figure 15A, depicting embodiments
in which the resource allocator becomes application
aware using information obtained from network layer 3
and transport layer 4 packet headers, is inconsistent with
T-Mobile’s urged disavowal of these embodiments.

Even more telling is the patentee’s addition, in the
2002 Reply, of claim 19, which expressly provides that the
“application type” can be recognized through “analysis of
at least one of: . . . information operated on at layer 3 of
the OSI model, information operated on at layer 4 of the
OSI model, . . . and information operated on at layer 7 of
the OSI model.” This shows that the patentee knew how
to restrict the resource allocator to using information
obtained from layer 7. If the patentee had intended to
similarly restrict the resource allocator in claim 1, it could
have done so using the language of claim 19, but did not.
See Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353,
1359 (Fed. Cir. 2016). What’s more, the addition of a
dependent claim reciting that the resource allocator can
use information obtained not only from application layer 7
but also from network layer 3 and transport layer 4 belies
any disavowal of these latter embodiments in the independent
claim from which it depends.

(...)

Having discerned no disavowal, we hold that the “application-aware
resource allocator” in claim 1 and “application-aware
media access control (MAC) layer” in
claim 20 are not restricted to allocating resources using
information obtained from application layer 7. We construe
this claim language to have its plain meaning,
which permits the resource allocator to allocate resources
based on application type, which can be discerned using
information from any of network layer 3, transport layer
4, and application layer 7.



As to indefiniteness:


Under 35 U.S.C. § 112, a patent claim must “particularly
point[] out and distinctly claim[] the subject matter”
regarded as the invention. In particular, a claim, viewed
in light of the specification and prosecution history, must
“inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014); see
also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1371 (Fed. Cir. 2014) (“The claims, when read in light of
the specification and the prosecution history, must provide
objective boundaries for those of skill in the art.”).
While a claim employing a “term[] of degree” may be
definite “where it provide[s] enough certainty to one of
skill in the art when read in the context of the invention,”
Interval Licensing, 766 F.3d at 1370, a term of degree that
is “purely subjective” and depends “on the unpredictable
vagaries of any one person’s opinion” is indefinite, Datamize,
LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–
51 (Fed. Cir. 2005).

We conclude that the “QoS requirements” are entirely
subjective and user-defined. The ’248 patent analogizes
QoS to “a continuum, defined by what network performance
characteristic is most important to a particular
user” and characterizes it as “a relative term, finding
different meanings for different users.” ’248 patent at
12:51–52, 62–65. “Ultimately,” the ’248 patent states,
“the end-user experience is the final arbiter of QoS.” Id.
at 14:39–40.