The Software IP Report

Broad Claim Term Dooms Patent at PTAB

Last month, the Patent Trial and Appeal Board issued a final written decision in Bright House Networks v. Focal IP (IPR2016-01263), finding the telecommunications patent in question obvious based on a broad claim construction of “switching facility.”

Like many inter partes reviews, this dispute started in district court. Multiple IPRs from the defendants followed: this petition against claim 1 of U.S. Patent No. 8,155,298, from Bright House Networks, WideOpen West Finance, Knology of Florida, and Birch Communications; another by the same parties against claim 20; a third by YMax against claims 1 and 20; and two more against related patents.

The patents pertain to telecommunications, specifically to using a web-based interface to control aspects of a call through the public switched telephone network (PSTN). In the primary embodiment, a call passes through a central office to a tandem switch (as conventionally occurred in the PSTN), and web-based control of the call passes a tandem access controller to the tandem switch, affecting the call.

Claim 1 provides “a method for providing user control selections for routing of one or more communications between users,” and the parties disagreed over the terms defining which components performed the methods, namely, “switching facility,” “coupled to,” and “web-enabled processing system.” The petitioners interpreted “switching facility” as “any switch in the communications network” and advocated for similarly broad constructions for the other terms. Focal instead wanted the terms together to mean a web-enabled processing system directly connected to a switch that is not an edge switch or edge device, in particular, a tandem switch.

The PTAB sided with the petitioners, finding that a “switching facility” encompassed all five classes of PSTN switch, including an edge switch. The term “switching facility” is a broader term than “tandem switch,” and nothing in the intrinsic evidence narrows the understanding. In fact, the term “switching facility” does not appear in the specification; instead, the applicant introduced the term for the first time in claim amendments.

The PTAB systematically shot down Focal’s arguments. First, Focal cites language from the specification on the benefits of using the tandem switch; however, the citations relate to the preferred embodiment, not necessarily to all embodiments. Second, Focal contends that the claim language implies that “switching facility” excludes edge switches: “a network comprising edge switches for routing calls from and to users within a local geographic area and switching facilities for routing calls to other edge switches or other switching facilities.” But these terms are still differentiated within the claim if edge switches are a subset of switching facilities. Third, Focal points to disclaimers in the specification and prosecution history, but the PTAB found none of the citations specific enough to serve as disclaimers, especially since “switching facility” does not appear in the specification.

For similar reasons, the PTAB chose the broader constructions of the other two terms, and then found claim 1 obvious.

Lessons for Practice

The applicant intentionally chose to use a broader, undefined term—“switching facility”—rather than a narrower term with a well-understood technical meaning—“tandem switch.” This choice highlights the tension between infringement and validity. The broader term undoubtedly strengthened the applicant’s ability to assert infringement. But on validity, Focal got bit.

Choosing the broader term may well be the right choice. In that case, an applicant should still take a couple steps. First, provide a definition. A definition, particularly an explicit definition, can be helpful to ward off indefiniteness. Second, layer in dependent claims using narrower, more technical terminology. These claims can offer backup positions against invalidity not just in prosecution but also at trial.

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