Federal Circuit Defines Term In View of Consistent Single Usage in Specification and Finds Term “Comprising” Does Not Automatically Broaden the Term

In Board of Regents of the University of Texas System v. BENQ America Corp., 533 F.3d 1362, 87 USPQ2d 1437 (Fed. Cir. 2008), the Board of Regents of the University of Texas System (“Board of Regents”) appealed the District Court for the Western District of Texas’s final judgment that BENQ America, Corp., et al. (collectively “BENQ”) did not infringe Board of Regents’ U.S. Patent No. 4,674,112 (“the ‘112 patent”). The Federal Circuit affirmed the District Court’s decision.

The ‘112 patent describes an apparatus and method designed to enable “non-verbal entry” and transmission of a word/words using a standard, touch-tone telephone. Because each key on a standard touch-tone telephone represents more than one letter, the user depresses a key one time for any of its corresponding letters, and the method compares this sequence against a vocabulary directory of possible words that the user may be intending to enter. The system minimizes memory requirements and enables an expanded word recognition capability by using a vocabulary of syllabic elements rather than a vocabulary of words.

During prosecution, the examiner rejected the claims as anticipated by the Rabiner article, “Digital Techniques for Computer Voice Response: Implementations and Applications,” Proceedings of the IEEE, vol. 64, No. 4, Apr. 1976, pp. 416-33.  The examiner noted that Rabiner taught a system described by the claims, in which a single key is depressed for each letter of a word to be transmitted even though each key corresponds to multiple different letters. In response to the rejection, the Board of Regents amended claim 10 to state “each pre-programmed code being representative of a syllabic element [replacing an alphabetic character string],” and the ‘112 patent, thereafter, issued.

In March and May of 2005, the Board of Regents filed three separate lawsuits in the Western District of Texas alleging infringement of claim 10 (and its dependent claim 11) of the ‘112 patent by an extensive list of defendants. In October 2005, the District Court consolidated these cases into the present suit. Upon a Markman hearing, the District Court concluded that the claim term “syllabic element” means “a one-syllable letter group that comprises a word or can be combined with other one-syllable letter groups to form a word.” The District Court also concluded that the claim term “one or more pre-programmed codes” did not require construction.

On November 7, 2006, Motorola (defendant) filed a motion for summary judgment of non-infringement, which argued that Motorola’s accused devices did not infringe the matching limitation of claim 10 (i.e. “matching said binary code with one or more pre-programmed codes, each pre-programmed code being representative of a syllabic element”). The District Court granted this motion to all the defendants, concluding that the accused devices did not infringe the matching limitation because none of the accused devices “relie[d] upon a vocabulary of only syllabic elements, even if certain entries in those vocabularies happen[ed] to be one syllable long.”

On appeal, the Board of Regents argued that the District Court improperly rejected its intermittent infringement argument, erroneously determined that the accused devices fell outside the scope of the claims, and failed to resolve all factual inquiries in favor of the non-movant. The Board of Regents further disagreed with the District Court’s claim construction of “syllabic element” and its grant of summary judgment.

Defining “Syllabic Element”

In addressing the Board of Regents first argument, the Federal Circuit turned to the specification of the ‘112 patent to construe the term “syllabic element.” The specification repeatedly distinguishes between a “word” and a “syllabic element” and indicates that a word is comprised of syllabic elements, confirming that those terms are not coextensive in scope. Further, the specification contains a sole example of a syllabic element—“con,” a one-syllable letter group that is both a word and is able to be combined to form other words. The District Court found this passage to imply that a syllabic element is limited to a single syllable, whereas the Board of Regents reasoned that because “common letter-groups, suffixes, [and] prefixes” are “referred to as ‘syllabic elements,’” the term “syllabic element” must include every common letter-group, suffix, or prefix. Thus, because some prefixes include more than one syllable, the Board of Regents argued that this passage compels a construction that allows syllabic elements to be more than one syllable. The Federal Circuit, on the other hand, found that just because a “syllabic element” may be a prefix or a suffix does not mean that all prefixes and suffixes are “syllabic elements.” Also, this passage includes “common letter-groups” as possible “syllabic elements,” but even the Board of Regents did not contend that all common letter groups are “syllabic elements.”

The Board of Regents added the term “syllabic element” to claim 10 during prosecution of the ‘112 patent. If, as the Board of Regents proposed, the phrase “syllabic element” was broadly defined to include letter groups having any number of syllables, then all words would also be syllabic elements. This does not square with the prosecution history, however, as claim 10 was amended and the dependent claim that required matching with words was cancelled. This indicates that the set of “syllabic elements” does not include all words. The Federal Circuit noted that, in construing claims, the prosecution history can be useful, especially as to amended terms used to obtain allowance of a claim.  Jansen v. Rexall Sundown, Inc., 342 F.3d 1329, 1333 (Fed. Cir. 2003).  In view of the prosecution history, the Federal Circuit concluded that the proper construction of “syllabic element” was a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word. The Federal Circuit saw no error in the District Court’s claim construction.

“Each Pre-Programmed Code” Requires All Pre-Programmed Codes to Have Syllabic Element

As to the disagreement over the language, “each pre-programmed code being representative of a syllabic element,” the Board of Regents asserted that the claims simply require matching with one or more syllabic elements based on the theory that infringement occurs whenever a match with a syllabic element occurs, even if matches are also made with non-syllabic elements. BENQ disagrees and asserts that the claim requires that the database be composed solely of syllabic elements. The Federal Circuit found that it was significant that claim 10 distinguishes between “each pre-programmed code” and “the matched one or more programmed codes” because different claim terms are presumed to have different meanings. CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000). Because “the matched one or more preprogrammed codes” clearly refers to the pre-programmed code(s) that are matched with the binary code in the “matching” step, the Federal Circuit concluded that “each pre-programmed code” must refer to all potential pre-programmed codes in the vocabulary accessed by the method. Because the prosecution history attributed significance to the use of the word “each” in defining the claim over the art, the Federal Circuit concluded that the claim phrase “each pre-programmed code being representative of a syllabic element” means that the vocabulary only includes syllabic elements.

“Comprising” Does Not Broaden “Each Pre-Programmed Code” Claim Element

The Board of Regents argued on appeal that the term “each” does not preclude the possibility of other codes as the use of the term “comprising” in claim 10 should allow an accused device to infringe anytime it satisfies the matching limitation in situations where other pre-programmed codes do not meet the conditions.  Thus, according to the Board of Regents, the addition of unrecited steps (such as matching with a pre-programmed code that is not representative of a syllabic element) should not defeat infringement.

In rejecting this argument, the Federal Circuit held that, while the generally correct presumption is that the use of the transitional phrase “comprising” does not exclude additional unrecited steps, the phrase “comprising” does “not reach into each of the [claimed] steps to render every word and phrase therein open-ended—especially where, as here, the patentee has narrowly defined the claim term it now seeks to have broadened.” Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007). Therefore, the Federal Circuit determined that the Board of Regents could not rely on the word “comprising” to broaden the scope of a claim phrase that was limited during prosecution so as to gain allowance of the patent. See Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005); Eckchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997).

The Federal Circuit concluded that the District Court correctly granted summary judgment of non-infringement as there was no substantive dispute regarding the relevant issues of fact. A “syllabic element” is a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word (even being as small as a single letter), and “each pre-programmed code being representative of a syllabic element” means that the vocabulary only includes syllabic elements. As the accused devices did not use pre-programmed codes devoted exclusively to syllabic elements, the District Court properly entered judgment that the accused devices do not infringe the asserted claims of the ‘112 patent.

Significance to Patent Applicants

Board of Regents presents a reminder both as to the need to draft specifications with alternative embodiments to ensure broad claim interpretation, and that the term “comprising” will not always overcome a narrow claim interpretation where the specification demands a more narrow interpretation. Where a word is consistently used within the specification, that word will likely be given the same meaning when used in claim language.

Moreover, where plural elements are recited, the term “each” in relation to a feature of the elements can have a restrictive and closed meaning.  In Board of Regents, the term “each” was interpreted to preclude infringement where even one code did not have a syllabic element.  Therefore, the word “each” should be avoided, and if its use is unavoidable, applicants should ensure that the specification is clear that the use of the term “each” does not restrict the use of the invention.



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