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Federal Circuit Tightens Surrendered Patent Claim Scope Rule
Practical Law Legal Update 6-518-4232 (Approx. 3 pages)
Federal Circuit Tightens Surrendered Patent Claim Scope Rule
| Law stated as at 13 Mar 2012 • USA (National/Federal) |
Recently, in Digital-Vending Services International, LLC v. The University of Phoenix, Inc., the Court of Appeals for the Federal Circuit held that a patentee did not disavow the scope of certain claims through limiting language in the patent specification because the specific claims at issue did not recite the contested language of limitation. The dissent argued that the majority erred and that this case presented one of the rare instances where a patentee clearly disavowed claim scope through limiting language in the patent specification.
Digital-Vending Services International, LLC sued The University of Phoenix, Inc. and Apollo Group, Inc. for infringing claims in three patents concerning regulating access to content delivered through a computer network. The network architecture is multi-level with a registration server level, a content server level and a client level. This architecture prevents unauthorized use of content, in part, by keeping the content on a content server, separate from the registration server, which is free of that content.
The District Court for the Eastern District of Virginia construed the term "registration server" in the claims as requiring it to be free of content managed by the network architecture and granted The University of Phoenix's motion for summary judgment of non-infringement. However, the Court of Appeals for the Federal Circuit vacated part of the district court's order because of an erroneous claim construction.
The Federal Circuit's majority opinion found that the term "registration server" does not need to be free of managed content because of the context in which the disputed claim term is used. Specifically:
- Some of the claims explicitly state that the "registration server" must be "free of content managed by the architecture" while other claims do not recite this limitation. Therefore, if "registration server" were construed to inherently contain the "free of content" limitation, that language would be superfluous in those claims that already contain this language. Claims should be construed to give effect to all claim terms.
- The specification distinguished between architecture claims, which explicitly require the "registration server" to be free of managed content, and process claims, which do not recite that limitation, when describing the "registration server" being free of managed content. The relevant claims are method claims.
The dissent argued that the majority erred because:
- The specification states that it is a "requirement" that a registration server include no content managed by the architecture.
- The description of the method refers to the specific registration server that the specification describes must be free of managed content.
- A clear and unmistakable disavowal of claim scope in the patent specification overrides the claim differentiation rule applied by the majority.
Practical Implications
Persons attempting to narrow patent claims should not rely on limiting language in the specification as the sole basis to interpret claim scope. The claim language and the context in which the disputed claim term is used remain key evidence when construing claim scope. Patentees, on the other hand, should continue to include claims of different scope and with different limitations to maximize the scope of patent protection.