On July 29, 2019, Judge Gregory Woods illustrated how subject matter that is incorporated by reference in the specification can impact the scope of the claims in claim construction.

In Kewazinga, the plaintiff asserted infringement of three patents describing telepresence systems that enable one or more users to navigate imagery through a remote environment. Two of those patents, U.S. Patent Nos. 6,522,325 and 9,055,234, explain that the systems can mix image output through techniques such as a “mosaicing” process to effect seamless motion through the environment.

During claim construction, the parties proposed competing constructions of “mosaicing” and “mosaic imagery” focusing on whether “mosaicing” requires generating a “seamless” image. Rather than rely only on the disclosure of the patents-in-suit themselves, the Court noted that the specifications incorporated by reference a third patent, the “Burt Patent,” which further described “mosaicing.” Unlike the specifications of the patents-in-suit, the Burt Patent disclosed a more nuanced process that included steps intended to minimize seams, as opposed to a process in which all seems were actually eliminated. Based on Burt, the Court held that the claims did not require the actual “seamless” generation of images so long as the mosaicing process included “steps aimed at minimizing the seams.” The Court then proceeded to decide several other claim construction disputes by referring to the Burt Patent and another incorporated-by-reference patent.

Kewazinga Corp. v. Microsoft Corp., No. 1:18-cv-4500-GHW (S.D.N.Y. July 29, 2019)