Disparagement of Prior Technology Limits Patent Claim Coverage

The appellate court which handles patent appeals from the U. S. District Court ruled that if a patentee disparages prior art in pre-existing technology, the patented invention in the claims does not cover such prior art.  Openwave Systems Inc.  v.  Apple Inc., Case No.  2015-1108 (Fed.  Cir.  Dec.  15, 2015) (Available Here).

Patent owner Openwave Systems Inc.  (“Unwired Planet”) owned a patent to a wireless mobile telephone.  Unwired Planet sued Apple Inc.  and others.  The U.S. District Court was called upon to review an ITC Administrative Law Judge’s claim construction of the disputed patent claim term “mobile device.”

The relevant issue on appeal was whether the claim term, “mobile device,” should be given its ordinary meaning or whether the disputed patent language should be construed in light of clear patent specification language which repeatedly disparaged certain prior art technology and disclaimed mobile devices containing “computer modules.”

The patent specification, which is used to determine the scope of disputed patent claim elements, discussed several problems with the prior art mobile phones.  Those problems include that the then current mobile phones could not be updated without physically changing the computing hardware in the phone itself, the computer program applications on the phones were burned into the phone’s ROM, the then current mobile phones were too big and too expensive and had problems with battery life.  Further, at the time of the invention in 1995, the mobile phones did not have processors that were very powerful.

To overcome these difficulties, the inventor devised ways to divide the computing power between the mobile phone and a remote server.  “At issue is whether the claims cover only mobile devices with small microprocessor – which facilitate communications between the client device and the server – or also cover mobile devices that contain more robust ‘computer modules’ – which serve to localize more of the computational processes into the mobile phone device itself.”

The U.S. District Court found that the patented invention did not encompass mobile devices containing “computer modules” but did not exclude telephone devices employing microprocessors.  The lower court supported its finding by stating that patentee’s repeated derogatory statements reasonably may be viewed as a disavowal of that subject matter from the scope of the patent claims.

Procedurally, the appellate court noted that when a plaintiff concedes noninfringement by stipulation, the appeals court need only address the District Court’s claim construction of the pertinent claims.  This review is conducted de novo and the appeals court applies the “clear error” rule in its review of any necessary subsidiary fact finding.

The appeals court noted that the patent specification is the best single guide to determine the meaning of the disputed claim term and, as such, is usually dispositive.  In particular, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor, in which case the inventor’s intention, as expressed in the specification, is regarded as dispositive.  However, disavowal requires that the specification “make clear” that the invention does not include a particular feature. To find disavowal of claim scope through disparagement, the specification must go well beyond expressing the patentee’s preference.  These preferences may be found in a discussion of one or more specific embodiments of the claimed invention.  

“It is improper to read limitations from a preferred embodiment described in the specification – even if it is the only embodiment into the claims – without a clear indication in the intrinsic record that the patentee intended the claims to be so limited.”

The court then went on to confirm that the disparagement of prior art pre-existing technology was found repeatedly in the Background of the Invention, the Summary of the Invention and in the Detailed Description of the invention.  

“There is no doubt a high bar to find disavowal of claim scope through disparagement of the prior art in the specification.”

With this background, the appeals court construed the disputed patent claim term “mobile device” as a “portable wireless two-way communication device that does not contain a computer module” and that this construction “does not read out embodiments including microcontrollers.”

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