Straight Path IP Group, Inc. v. Sipnet EU S.R.O.
Addressing claim construction issues in the context of an inter partes review, the U.S. Court of Appeals for the Federal Circuit concluded that the Patent Trial and Appeal Board’s (PTAB or Board) construction of the term “is connected” was erroneous, even under the broadest reasonable interpretation (BRI) standard. Straight Path IP Group, Inc. v. Sipnet EU S.R.O., Case No. 15-1212 (Fed. Cir., Nov. 25, 2015) (Taranto, J.) (Dyk, J. dissenting).
The patent at issue, held by Straight Path, described a system for allowing voice and video communications despite changing IP addresses in which the system would query a server as to whether a user “is connected to a computer network” by having the server search the database for “any stored information corresponding” to the user. Relying on a small portion of the specification, the PTAB agreed with the petitioner, Sipnet, that the term “is connected to a computer network” included users that had previously been connected or registered with the server, even where those users were no longer connected at the time of the query. This broad interpretation invalidated many of the patent’s claim as anticipated or obvious in light of prior art. Straight path appealed.
Conducting a de novo review, the Federal Circuit overturned the Board’s construction of the contested claim limitation. According to the Court, the present tense “is” in the claim term “is connected to the computer network” plainly means that the query transmitted to the server seeks to determine whether the second unit is connected at the time the query is sent. The Court went on to explain that, where the claim language is particularly clear, “the specification plays a more limited role than in the common situation where claim terms are uncertain in meaning.” The Court explained that unless there is a disclaimer or redefinition, either explicit or implicit, the proper construction of any claim language must, among other things, “stay true to the claim language.”
In this case, the specification does not provide a basis for reasonably adopting a construction that contradicts the plain meaning of the claim language. Rather, the portion of the specification cited by the Board—which says no more than that the unit is active and online at the time of registration—does not expressly or implicitly redefine the phrase “is connected.” Indeed, as the Federal Circuit noted, the specification further explains that the server “may use the timestamps to update the [online] status of each processing unit”; meaning that the specification recognizes the temporal nature of the status of actually being online.
Judge Dyk dissented from the majority, relying on Phillips to argue that the specification is always highly relevant to the claim construction. He also referenced prior Federal Circuit cases in which the Court had found, based on the specification, that claims requiring “real time data” did not require instantaneous data.