HTC v. IPCom: Phillips Construction and Grammar Refresher
In a scholarly opinion by the Federal Circuit Court of Appeals, Circuit Judge O’Malley reverses the district court’s finding of indefiniteness. While no new law is made, this case analyzes a few important issues, and once again highlights the importance of Phillips construction.
At issue is IPCom’s U.S. Patent No. 6,879,830 (“’830”), which covers a handover in a mobile phone network. The district court found ‘830 claims 1 and 18 indefinite because they claimed both an apparatus and a method. The appeals court reversed, instead finding that “the district court misconstrued the claims, which cover only an apparatus.” The indefinite issue turned on both linguistic and legal interpretations of the claims.
The appellate court numbered and italicized portions of the claims. When reading, pay close attention to which functions are performed by the mobile station and which are performed by the base station:
 A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:
 storing link data for a link in a first base station,
 holding in reserve for the link resources of the first base station, and
 when the link is to be handed over to the second base station:
 initially maintaining a storage of the link data in the first base station,
 initially causing the resources of the first base station to remain held in reserve, and
 at a later timepoint [sic] . . . deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:
 an arrangement for reactivating the link with the first base station if the handover is unsuccessful.
The decision before each court was between two interpretations of the first paragraph:
I. A mobile station . . . that achieves a handover from the first base station to the second base station . . .
II. . . . a network (the network including a first base station and a second base station) that achieves a handover from the first base station to the second base station . . .
The appellate court succinctly stated the outcome of the decision:
If the mobile station implements the functions, the claims are indefinite because they recite both an apparatus—the mobile station—and method steps—the functions enumerated in paragraphs 2–7. If the network performs the functions, the claims are not indefinite because the claims merely describe the network environment in which the mobile station must be used.
Citing Strunk and White’s sophistic classic The Elements of Style, the appellate court reminds us that modifiers should be placed next to the words they modify. In claim 1 paragraph 1, because both the base stations and the handover are listed after “network,” they should be interpreted to pertain to the network. Supporting this construction is the recitation of the mobile station at the end of paragraph 7: employing a reductio ad absurdum argument, it would be illogical for the author to have intended paragraphs 2 through 7 to apply to the mobile station, only to recite the mobile station again later in paragraph 7.
The appellate court then transitions from the linguistic arguments to the legal: citing Phillips, the court looks to the specification to support this construction. Supporting the conclusion that the mobile station performs the functions in paragraphs 2 through 6, the appellate court cites the specification: “[T]he data required for the link initially remain stored in BS 1 [the first base station], and initially BS 1 does not reassign the resources . . . required to maintain the link with the MS [mobile station].” The court then dismissed HTC’s argument that the mobile station is the “quarterback” by mapping each paragraph 2 through 6 to four portions of the specification.
The appellate court then addressed the district court’s interpretation of the prosecution history. As noted by the district court, the ‘830 applicants distinguished prior art: “the cited section of [the prior art reference] clearly describes a process that is completely different from the claimed process . . . .” The option suggests the appellate court agreed with the district court’s interpretation of this sentence, specifically that applicant’s use of the word “process” is tantamount to an acknowledgement that claims 1 and 18 recite process steps. Even though the appellate court conceded that prosecution history should be examined per Phillips, the appellate court cited Philips to support dismissal of this argument: “[B]ecause the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.” Basing its opinion on the linguistic and legal reading of the claims and specification, the appellate court concluded the claims are definite and paragraphs 2 through 6 apply to the network only.
The appellate court addressed two other issues decided by the district court: whether the claims set forth a proper means-plus-function claim, and whether “disclosure of a processor and transceiver alone was sufficient to provide structure to these claims.” To the former, the appellate court agrees with the district court that a skilled artisan would understand the specification to require a processor and transceiver:
The district court concluded that the structure corresponding to the “arrangement for reactivating” limitation was “a processor connected to a transceiver and programmed to formulate and send messages to reactivate the link, if the handover is unsuccessful.” Although the specification does not literally disclose a processor and transceiver, the district court stated that it had “no doubt that one skilled in the art would immediately deduce that a processor with a transceiver was the structure indicated by the term.”
To the latter point, the appellate court said “the district court misstated the law, however, when it stated that disclosure of a processor and transceiver alone was sufficient to provide structure to these claims.” Hopefully just for the sake of argument, the appellate court characterized the processor and transceiver as a general-purpose computer, and then applied this characterization to find insufficient structure: “We have ‘consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor’” (quoting Aristocrat v. Int’l Game). However, the appellate court indicated that failure to raise this issue below rendered the issue moot; unfortunately this also rendered the discussion into dicta.
Dicta aside, the overriding theme seems to be adherence to strict Phillips construction. While we should take care when responding to office actions, it seems nothing is so as important as the plain language of the claim itself, and its specification support. We may also do well to add a copy of The Elements of Style to our shelves.
[Lucas Hjelle contributed to this posting.]
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