The U.S. Court of Appeals for the Federal Circuit, finding that a “nonsensical result” would be effected by construing the claim term “syllabic elements” as proposed by patentee, affirmed the district court’s claim construction and subsequent grant of summary judgment of non-infringement in a consolidated suit that included a total of 56 defendants. Board of Regents of the Univ. of Tex. v. BENQ Am. Corp., Case No. 07-1388 (Fed. Cir., July 24, 2008) (Prost, J.).

The patent in suit is directed to methods and apparatus for transmitting a word (or words) using a standard touch-tone telephone by pressing a single key on the telephone that corresponds to a letter. The patent specification states that a sequence of keys are compared against a vocabulary of possible entries and the vocabulary may include either words or “syllabic elements” that can be combined to form a word. The dispute, both at the district court and on appeal, was the construction of a step in the claim that recites, “matching said binary code with one or more pre-programmed codes, each pre-programmed code being representative of a syllabic element.”

The district court construed the term “syllabic element” to mean “a one-syllable group that either comprises a word or can be combined with other one-syllable letter groups to form a word. A syllabic element may be as small as a single letter.” Despite contentions by the Board of Regents that the term should be more broadly construed to encompass any word or part of a word, the Federal Circuit agreed with the district court’s construction in its de novo review.

The Federal Circuit explained that the language of the claims provided “little guidance,” but that the specification repeatedly distinguished between a “word” and a “syllabic element,” suggesting that “the terms ‘word’ and ‘syllabic element’ are not coextensive in scope.” The court also looked to the prosecution history where a predecessor to the claim in suit was rejected as anticipated by a prior art (Rabiner) reference which taught processing a received signal “to identify the word or words of a request.” Two pending dependent claims recited that the alphabetic character string “one or more syllabic elements which combine to form a word” and that the character string comprised “a word.” To overcome the prior art, the independent claim was amended to recite “syllabic element” instead of the original “alphabetic character string” language, and both dependent claims were canceled. Based on these amendments and arguments presented to the examiner, the Federal Circuit found ample support for limiting the construction of “syllabic element” to a one-syllable letter group. The Court also found that the language “each pre-programmed code being representative of a syllabic element” required that the entire vocabulary consist solely of one-syllable letter groups. Because it was undisputed that the accused devices do not include vocabularies that consist solely of one-syllable letter groups, the Court concluded that the accused devices do not infringe the claim.