Federal Circuit Nos. 2014-1331, -1371

In Fenner Investments, LTD v. Cellco Partnership, the Federal Circuit addressed the issue of whether the district court's claim construction was correct. Fenner sued Cellco, doing business as Verizon Wireless, for infringing their U.S. Patent No. 5,561,706.

The '706 patent is directed to personal communication services (PCS) systems that assign users a person identification number (PIN) for billing purposes.

The representative claim of the '706 patent recites, in pertinent part, "receiving at a radio frequency communication switch a personal identification number from a mobile user," and the district court construed the term "personal identification number" as a number associated with an individual system user and not a device. Based on the district court’s construction, the parties stipulated to a final judgment of noninfringement. Fenner then appealed to the Federal Circuit.

On appeal, Fenner argued that the plain meaning of “personal identification number” should not require limiting the term to a number that is associated with an individual user and not a device. The Federal Court began its analysis by noting that a term’s ordinary meaning must be considered in the context of all the intrinsic evidence, including the claims, specification, and prosecution history.

Firstly, the Federal Court noted that the specification sets forth “Referring now to FIG. 1, wherein there is shown a block diagram of the present invention. ... The personal identification numbers 2 are not associated with any particular communications unit or physical location but are associated with individual users.” The Federal Circuit found this descript of the “present invention” to limit the scope of the invention.

Secondly, the Federal Court looked into the prosecution history, which it found to bolster the district court’s construction. During prosecution, Fenner argued, to overcome an obviousness rejection based on U.S. Patent No. 5,210,787 (“Hayes”), that Hayes is a device-centered communication system in contrast to Fenner’s user-centered design. Also, the Federal Court pointed out that Fenner alleged that the mobile identification number of Hayes “is equivalent to a typical wireline telephone since it must be assigned to a particular mobile communication switch or home exchange, much like a wireline telephone is.”

Thirdly, in response to Fenner's arguments that the district court's claim construction renders the patented invention inoperable, the Federal Circuit answered that such an interpretation does not mean that “there can never be any association between the personal identification number and the device,” but “a personal identification number is not permanently associated with a specific communications unit or location.” As such, the Federal Circuit rejected Fenner’s argument that the construction was flawed.

Lastly, the Federal Circuit concluded that the doctrine of claim differentiation in view of claim 19, which recites "the personal identification number ..[is] independent of a particular physical communication unit", did not negate the district court's claim construction subject to the limitation of “associated with an individual and not a device”. The panel stated that any presumption created by the doctrine of claim differentiation will be overcome by a contrary construction dictated by the written description or prosecution history. Accordingly, the Federal Circuit found that claim differentiation could not override the construction mandated by the intrinsic evidence.

Thus, the Federal Circuit affirmed the district court's ruling granting summary judgment of non-infringement in favor of Cellco.