Federal Circuit places heavy burden on an accused infringer that seeks to show a term with a clear, ordinary meaning is indefinite.

A patentee brought an action for infringement, asserting a patent that claimed methods for verifying that a software program on a computer is authorized to be there. At the Markman stage, the district court held that the term “program” and that the terms “volatile memory” and “non-volatile memory” were not indefinite. Patentee appealed the district court’s construction of “program,” while the defendant appealed the court’s construction of the two “memory” terms.

In reversing the district court’s interpretation of “program,” the Federal Circuit found that the claims themselves pointed against such a narrowing of the term, with certain non-asserted claims directed to the more specific interpretation, that the general disclosure in the specification did not limit the subject matter to particular types of programs, that the file history was not inconsistent with the specification general disclosure, and that the examples and even the examiner’s reasons for allowance were not limiting. Instead, the court found that term, when understood by a computer programmer, to simply be “a ‘set of instructions’ for a computer.”

The Federal Circuit then affirmed the holding that the “memory” terms were not indefinite. The court began by acknowledging that the “clear, settled, and objective” ordinary meaning of the disputed terms “leaves the relevant public with a firm understanding of the scope of the claim terms, unless something exceptional sufficiently supplants that understanding.” The court went on to find that the case presented nothing “exceptional,” considering both the specification and the prosecution history.

As to the specification, the court stated that “the terms at issue have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification.” The court further noted that the specification was not “starkly irreconcilable” with the ordinary meaning, and ultimately expressed its “doubt that an ordinary skilled artisan could have a reasonable uncertainty about the governing scope of the claims—even before completing the claim-meaning inquiry by examining the prosecution history.” (emphasis in original.)

The court went on to consider the prosecution history as to the “memory” terms. The examiner had stated that he was relying on the ordinary meaning in rejecting the claims as anticipated and indefinite. In response, the applicants amended the claims; in doing so, they “did not dispute the examiner’s understanding of ‘volatile’ and ‘non-volatile’ memory in their ordinary meaning.” The court held that “the natural meaning” of this episode was to confirm the clear, ordinary meaning.

A copy of the opinion can be found here.