The Software IP Report
CAFC Affirms PTAB Construction of “Connected to a…Network”
By Charles Bieneman
06/28/2017
Categories: 35 U.S.C. §§ 102, 103, Patent Claim Interpretation, The Claims Interpreted Report, The Software IP Report, USPTO Post-Issue Proceedings
Based on a plain and ordinary meaning – and the patentee’s clear statement in distinguishing prior art during prosecution – the Federal Circuit affirms PTAB finding of invalidity of patent claims predicted on a construction of “is connected to the computer network” as meaning “is connected to the computer network at the time that the query is transmitted to the server.” Samsung Electronics Co., Ltd. v. Straight Path IP Group, Inc., No. 2016-2004, etc. (Fed. Cir. June 23, 2017) (nonprecedential). Claims of U.S. Patents Nos. 6,108,704; 6,009,469; and 6,131,121 had been held to be valid over prior art in Inter Partes Review (IPR) proceedings. A representative claim was directed to “establishing a point-to-point communication link” between first and second processes over the computer network.
The above interpretation of “connected to the computer network” had been promulgated by the Federal Circuit in a prior proceeding. The party challenging the patents in that prior proceeding had argued that “is connected to the computer network” means “active and on-line at registration.” The court had rejected this proposed construction because there was no basis in the specification “for adopting a construction that contradicts the plain meaning of the claim language.” Moreover, the file history for the ’704 patent supported this plain meaning, because the patentee had distinguished prior art simply disclosed “an active name” that was “registered and that has not yet been deregistered, independent of whether the associated computer is or is not connected to the computer network.”
In the present case, based on the foregoing claim interpretation, the PTAB had found claims of all patents obvious over prior art under 35 USC § 103. On appeal, the IPR challengers (the Appellants) did not dispute the claim construction, but argued that the PTAB had improperly applied its “when it purportedly required that the prior art references demonstrate ‘perfect accuracy’ when querying whether a process is connected to the computer network.” But the PTAB, responded the Federal Circuit, never use the phrase, nor required, “perfect accuracy.” Although the references at issue both disclosed “mechanisms for maintaining the accuracy of the addresses registered in the name server databases,” this was “not sufficient” to meet the requirement of being “connected to the computer network” because me registration did not satisfy that claim limitation.