Cardsoft, LLC v. Verifone, Inc.; World Class Technology Corp. v. Ormco Corp.

In each of two essentially contemporaneous decisions, the U.S. Court of Appeals for the Federal Circuit rejected the patentee’s contentions on appeal that claim differentiation supported a broader construction than found by the district court.  Cardsoft, LLC v. Verifone, Inc., Case No. 14-1135 (Fed. Cir., Oct. 17, 2014) (Hughes, J.); World Class Technology Corp. v. Ormco Corp. Case No. 13-1679; 14-1692 (Fed. Cir., Oct. 20, 2014) (Taranto, J.)  These decisions reflect the limits of claim differentiation as a canon of claim construction. 

Cardsoft concerned two patents directed to software for controlling specialized computer systems such as payment terminals that include both hardware and software components.  According to the patent specification, the invention sought to solve the need to specifically write application programs for the myriad of existing hardware/software architectures.  Rather, the specification described an improvement on the existing concept of “virtual machine” by adding a “virtual message processor” to optimize the communication between the application program and the payment terminal’s underlying hardware and operating system.  During the prosecution, the applicant confirmed that this was his invention, stating that the claimed invention was “an addition to a conventional virtual machine,” not a wholly new structure.  The “convention” being Java’s “write once, run anywhere” virtual machine. 

At the district court, the disputed claim term “virtual machine” was construed to not be limited to running applications independent of any operating system or hardware since similar limitations were found in dependent claims.  After a jury, applying the district court’s claim construction, found infringement, Verifone appealed. 

The Federal Circuit reversed the district court’s construction of the dispute term, finding the construction did not reflect the ordinary and conventional meaning of “virtual machine” because it conflated the claimed “virtual machine” with the applications written to run on the virtual machine.  In other words, the Court found that the district court erred by not requiring the claimed “virtual machine” to be limited to the situation where the applications it runs are not dependent on any specific underlying operating system or hardware because these applications are written to communicate with the virtual machine, not the underlying architectures.

In World Class Technology, the Federal Circuit upheld a district court judgment of non-infringement of Ormco’s patent for a bracket for orthodontic braces structured to reduce gum contact or discomfort, a problem with the prior-art brackets.  The representative claim of the asserted patent disclosed “the bracket body including a support surface, a ledge, and an archwire slot . . .” that allowed the slide, when moving from a slot-closed to slot-open position, to move at an angle away from the gums.  The heart of the dispute was the construction of the term “support surface” and limitations on its movement during the movement of the movable slide.  The defendant argued that “support surface” required the surface to also play a slide-supporting role as the slide moved from the slot-open to the slot-closed position.  The patentee argued that because a dependent claim explicitly limits the support surface as “engaging” one portion of the slide when it is in the closed position, there is no requirement that the support surface play a supporting role during the movement into the closed position. 

Over the patentee’s objection that under the doctrine of claim differentiation the independent claim should not be limited to requiring the “support surface” to support and guide the slide during “translation,” the district court adopted the narrower construction.  After the parties stipulated to non-infringement under the district court’s construction, Ormco appealed. 

Noting the ambiguity in the claim and finding it unanswered by the claim itself, the Federal Circuit reasoned, “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction.”  Unfortunately for the patentee, the specification identified gum avoidance as the sole purpose of the claimed invention.  The Federal Circuit thus concluded that the broad construction urged by the patentee would not serve that purpose if it were to cover the allegedly infringing arrangement. 

With regard to patentee’s claim differentiation argument, the Federal Circuit noted that the correct constructions of the independent claim did not make it “of the same scope” as the dependent claim referenced by patentee and that, “[i]n any event, the specification firmly establishes the requirement of slide support . . .” as a limitation on the invention.

In both Cardsoft and World Class Technology, the Federal Circuit rejected the arguments that claim differentiation created a presumption for a broader construction.  In Cardsoft, the Federal Circuit found the ordinary meaning of “virtual machine” clear in light of the specification and prosecution history such that claim differentiation would not change its meaning.  Unfortunately, the patentee failed to argue infringement under the narrower construction, waiving any chance to make a showing on remand compelling the court to grant judgment as a matter of law of non-infringement.  In World Class Technology, the Federal Circuit rejected the patentee’s argument that a dependent claim added the limitations that would have covered the allegedly infringing orthodontic arrangement because the adopted construction of “support surface” did not give claim one the same scope as the dependent claim, giving the dependent claim “independent significance.” 

Practice Note: During prosecution, claiming a singular purpose for a claimed invention may preclude a construction that does not completely align with the description of the invention.