PERSONALIZED MEDIA COMMC’NS, LLC v. APPLE INC.: statements made in prosecution can define a claim term

The issue:


On appeal, PMC challenges the Board’s construction of
“an encrypted digital information transmission including
encrypted information.”1 We review de novo the Board’s
ultimate claim constructions and any supporting determinations
based on intrinsic evidence. Knowles Elecs. LLC
v. Cirrus Logic, Inc., 883 F.3d 1358, 1361–62 (Fed. Cir.
2018). We review any subsidiary factual findings involving
extrinsic evidence for substantial evidence. Id. at 1362.

(...)

The broadest reasonable interpretation standard applies in this IPR proceeding.2
Thus, the Board’s interpretation must be reasonable in light of the specification,
prosecution history, and the understanding of one skilled
in the art. See Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1298 (Fed. Cir. 2015), overruled on other grounds by
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017)
(en banc). The broadest reasonable interpretation must
also take into account “the context of the entire patent.”
Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374
(Fed. Cir. 2019) (quoting Phillips, 415 F.3d at 1312–13); see
also In re Translogic Tech., Inc., 504 F.3d 1249, 1256–58
(Fed. Cir. 2007) (applying Phillips “best practices” to claim
construction under broadest reasonable interpretation
standard).

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footnote 2: Per recent regulation, the Board applies the Phillips claim construction standard
to IPR petitions filed on or
after November 13, 2018. See Changes to the Claim Construction Standard for Interpreting Claims
in Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
Reg. 51,340 (Oct. 11, 2018) (codified at 37 C.F.R.
§ 42.100(b)). Because Apple filed its IPR petition before
November 13, 2018, we apply the broadest reasonable interpretation standard.



Footnote 3 as to "ordinary meaning":



Unfortunately, the ordinary meaning of “encrypted” does not impart a more precise understanding of
the claim limitation. As the Board found, the meaning of
“encryption”—and particularly whether it applied to analog or digital data—was “in flux” in the 1980s. Decision,
2017 WL 4175018, at *14. Neither party challenges this
finding on appeal.


As to defining a claim term via prosecution history:


We disagree with the Board’s legal analysis and conclusion. Even where “prosecution history statements do
not rise to the level of unmistakable disavowal, they do inform the claim construction.” Shire, 787 F.3d at 1366. 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.
Sunovion, 731 F.3d at 1276–77. Similarly, an applicant’s
amendment accompanied by explanatory remarks can define a claim term where, as here, the claim language and
specification fail to provide meaningful guidance. Tempo
Lighting, 742 F.3d at 977–78. Thus, 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. Assuming without deciding
that PMC’s statements and amendments were inadequate
to give rise to a disclaimer, we still find that 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.

(...)

The applicant asserted that the amended claims should be allowed because
the prior art “does not teach the encryption of an entire digital signal transmission.” Id. (emphasis added). Accordingly, we conclude that the applicant’s repeated and
consistent statements during prosecution, along with its
amendment to the same effect, are decisive as to the meaning of the disputed claim term—even if those statements
do not rise to the level of a disclaimer. See Shire, 787 F.3d
at 1366; Tempo Lighting, 742 F.3d at 977–78; Sunovion,
731 F.3d at 1276–77.