In Netcraft Corp. v. eBay et al., No. 2008-1263 (Fed. Cir. 2008), Netcraft obtained two patents related to Internet billing methods: U.S. Patent No.6,351,739 (the ‘739 patent) and U.S. Patent No. 6,976,008 (the ‘008 patent). Both patents claimed priority to U.S. Patent No. 5,794,221 (the ‘221 patent), and thus both patents contained identical specifications. Netcraft sued eBay and eBay’s subsidiary PayPal for infringement of these patents. eBay raised a non-infringement defense, arguing that eBay did not provide Internet access and therefore did not “provid[e] a communication link” as recited in the asserted claims. The District Court agreed, and granted eBay’s motion for summary judgment of non-infringement. Netcraft appealed to the Federal Circuit, which upheld the District Court’s ruling.
The Federal Circuit’s ruling revolved around the meaning of the disputed term “providing a communication link…through equipment of the third party”, which was recited in the representative claim 1 of the ‘739, but which was not used or defined in the specification. Consistent with claim construction principles, the Federal Circuit turned first to the specification for insight as to the meaning of the disputed term.
Netcraft argued that the specification provided no support for the District Court’s claim construction. However, the Federal Circuit found ample evidence in the specification to support the District Court’s position. Specifically, the specification repeatedly referred to objects of “the present invention” relating to providing Internet access, and summarized that the objects of “the present invention” were achieved by “the provider creates access to the Internet for the customer through the provider’s equipment.” Additionally, the abstract explicitly stated that “the provider creates access to the Internet for the customer.” Netcraft, at 8. The Federal Circuit highlighted the consistent use of the phrase “the present invention” as indicated that the invention, as a whole, required the providing of the communication link.
Netcraft argued that these references to the “present invention” should not be seen as limiting. While acknowledging that the mere “use of the phrase ‘the present invention’ does not ‘automatically’ limit the meaning of claim terms in all circumstances, and that such language must be read in the context of the entire specification and prosecution history,” the Federal Circuit found that the repeated use of the phrase the “present invention” and the prosecution history supported the District Court’s interpretation. In this case, the specification repeatedly conveyed the impression that the invention as a whole relating to the provider/third party providing Internet access as part of the billing method. The Federal Circuit found no evidence within the specification to indicate that the provider/third party did not provide Internet access or that another party could provide internet access instead of the provider/third party doing the billing method. For example, Figure 2 of the ‘739 patent disclosed a step labeled “Connect Customer to Internet”, while Figure 3 disclosed a step labeled “Customer Connects to Internet”. Netcraft argued that the language of Figure 3 supported a conclusion that the third party was not required to provide Internet access. According to the Federal Circuit, however, nothing in the specification foreclosed the District Court’s construction; in particular, other elements of the two figures differentiated the two methods shown. Furthermore, the specification specifically referred to equipment as equipment that enabled Internet access.
The Federal Circuit next chided the District Court for failing to take the prosecution history of the asserted patents into account. The Federal Circuit nevertheless concluded that this error was harmless, because the prosecution history did not clearly support Netcraft’s argument. In one amendment, the prosecuting attorney indicated an example of a link as being a web site or E-mail address of the vendor. The Federal Circuit, however, could not determine whether the web site and E-mail addresses were examples of a communication link (as argued by Netcraft) or examples of additional features of an Internet access provider (as argued by eBay). Prosecution history proffered by eBay was also found lacking. The ambiguity of the prosecution history did not support either side’s position, and the District Court’s failure to consider the prosecution history was therefore harmless.
Significance to Patent Applicants
In Netcraft Corp. v. eBay et al., the Federal Circuit provided an object lesson in the dangers of using claim terminology that is not used in the specification. Specifically, the Federal Circuit construed the term “providing a communications link”, to require providing a customer with Internet access. Since this term was not used or defined in the specification except through a single embodiment in which the internet access is provided by the equipment of the provider providing the billing, the court was free to use broad language defining “the present invention” to restrict the meaning of the term in the claim to not include third parties providing internet access to the provider. The Federal Circuit’s decision upholding the District Court’s claim construction highlights two errors in the Netcraft patents’ specification and claims. First, the claims used a term that was not used or defined in the specification in a manner allowing a broader interpretation of the providing operation. Since the specification is an important source of information for interpreting claim terms, the omission provided the accused infringer with an opportunity to interpret the specification in a limiting fashion, which is the interpretation adopted by the courts. Second, the specification repeatedly referred to “the present invention”, which allowed the court to limit the interpretation of the claims to the particular objects described and did not indicate that the recited features can be independently provided. Broader language, such as “aspects of the present invention” or other language indicating that the specification referred to examples which can be used separately, would have constrained the court’s ability to limit the claims to require use of all of the examples described. Lastly, in terms of claim construction, the situation could have been resolved by instead removing the “providing” feature from the method claims. Thus, where ministerial features are being recited in method claims and these features need not be performed by the same entity for purposes of infringement, claims should be drafted to ensure that the claims cover infringement without the recited ministerial feature. In Netcraft, the providing of a communication link is a fairly routine feature which can be provided by any number of entities. By removing the “providing” operation and instead relying on a “provided” communication link, the result in Netcraft might have been avoided.