Claim Language Narrowed by Prosecution History Arguing Common Limitation on Multiple Claims

Case Name: Seachange International, Inc. v. C-COR Inc., (Fed. Cir. No. 04-1375, 04-1498, 6/29/05).

The One Sentence Summary: The prosecution history regarding the term "a network for data communications" limited the phrase to include only point-to-point connections where such connections were repeatedly argued as the basis for distinguishing a group of claims from prior art, and other types of networks could not infringe under the doctrine of equivalents because that would vitiate the claim limitations argued in the prosecution history.

Federal Circuit Rulings:

• The court rejected the claim construction argument of plaintiff Seachange regarding the term "network for data communications." Seachange had argued that the term was not limited to networks where all nodes were connected point-to-point. While the Federal Circuit agreed that the claim language and the specification did not limit the term to point-to-point networks, the Federal Circuit held that the prosecution history applying the point-to-point limitation to all claims narrowed the scope of the claims.
• Claim 1 had included a point-to-point network limitation while claim 37 did not explicitly include the limitation. Seachange had argued that the principle of claim differentiation required the claims to be interpreted differently. The panel observed that the presumption of claim differentiation between claims 1 and 37 of the patent is not a hard and fast rule and will be overcome by a contrary construction dictated by the written description of prosecution history:

  "The doctrine of claim differentiation stems from "the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope." Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999). Although the doctrine is at its strongest "where the limitation sought to be 'read into' an independent claim already appears in a dependent claim," Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004), there is still a presumption that two independent claims have different scope when different words or phrases are used in those claims, Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 1365-69 (Fed. Cir. 2000); see also Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed. Cir. 1987). However, the doctrine "only creates a presumption that each claim in a patent has a different scope; it is not a hard and fast rule of construction." Kraft, 203 F.3d at 1368 (internal quotations omitted). "[T]he doctrine of claim differentiation can not broaden claims beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence. . . . [C]laims that are written in different words may ultimately cover substantially the same subject matter." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998)."

• Reviewing the written description, the Federal Circuit noted that the written description consistently referred to network interconnections as point-to-point but noted that it was unclear in this description whether that was a description of one possible embodiment of the invention itself.
• Turning to the prosecution history, the Federal Circuit agreed with the argument by defendant C-COR that Applicant's arguments made during prosecution narrowed the scope of the "network for data communications" limitation in claim 37 (40) to cover only a point-to-point network:

  "The prosecution history constitutes a public record of the patentee's representations concerning the scope and meaning of the claims, and competitors are entitled to rely on those representations when ascertaining the degree of lawful conduct, such as designing around the claimed invention." Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000). Thus, in construing the claim, we consider the prosecution history to determine "whether the patentee disclaimed or disavowed subject matter, narrowing the scope of the claim terms." Nystrom v. Trex Co., 374 F.3d 1105, 1113 (Fed. Cir. 2004) (internal quotation omitted). In doing so, we examine the entire prosecution history, which includes amendments to claims and all arguments to overcome and distinguish references. Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1326 (Fed. Cir. 2002); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999). Where an applicant argues that a claim possesses a feature that the prior art does not possess in order to overcome a prior art rejection, the argument may serve to narrow the scope of otherwise broad claim language. Rheox, Inc., 276 F.3d at 1325 ("Explicit arguments made during prosecution to overcome prior art can lead to narrow claim interpretations . . . ."); Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997) ("[S]ince, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover, he is by implication surrendering such protection."). A disclaimer must be clear and unambiguous. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-25 (Fed. Cir. 2003)."

• The court noted that where the applicant had grouped several claims together and made a single argument to distinguish them from the prior art, the applicant could not later claim that some of claims that had been grouped were not limited by the argument. (Slip Opinion at 16.)
• The court also rejected an argument that the Examiner's reasons for allowance provided notice to the public that Claim 37 was not limited by the point-to-point feature. The court noted that "the natural reading of applicant's statements suggest that the point-to-point argument applied to each claim in the grouping." (Slip Opinion at 17.)
• The court also held that arguments incorporating earlier arguments as to the meaning of the terms data communications network limited the meaning of those claims. (Slip Opinion at 17-18.)

  "We find unpersuasive Seachange's argument that the Examiner cited the "redundant storage" feature as the reason for allowance. The fact that the Examiner did not indicate reliance on the point-to-point distinction is of no consequence. An applicant's argument made during prosecution may lead to a disavowal of claim scope even if the Examiner did not rely on the argument. Microsoft, 357 F.3d at 1350." (Slip Opinion at 18.)

• At Slip Opinion 20, the court rejected an argument that a later protest response worked to nullify the earlier argument limiting the data communications network to a point-to-point network.

  "In the final analysis, the Protest Response does not alter our conclusion that the statements Applicant made in responding to the First Action and in distinguishing over Morita and Benner inescapably narrowed the meaning of the data communications network in claim 37 (40) to a point-to-point network. Applicant's response to the First Action was "a deliberate surrender of claim scope, unmistakable in its effect because it is not suitable to multiple interpretations." Omega Eng'g, 334 F.3d at 1327. The Protest Response addressed Gardner, did not alter the bases upon which the Applicant distinguished Morita and Benner, and did not undo this disclaimer already made. See Hockerson-Halberstadt, 222 F.3d at 957."

• The court next held that a preamble including the phrase "distributed computer system" should have been interpreted as part of claim construction as a claim limitation because it was necessary to interpret the claim:

  "Thus, a preliminary question exists as to whether "distributed computer system" is a claim limitation. See Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801, 807-08 (Fed. Cir. 2002). "In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality' to the claim." Id. at 808 (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). "[I]f the preamble helps to determine the scope of the patent claim, then it is construed as part of the claimed invention." NTP, Inc. v. Research In Motion, Ltd., 392 F.3d 1336, 1358 (Fed. Cir. 2004)."

• The court held that the district court erred in requiring that each processor system stand alone. (Slip Opinion at 23.)
• The court agreed that the district court had erred in importing a limitation of being able to run an application program from a preferred embodiment of the patent. (Slip Opinion at 23-25.)
• The court rejected the request for application of the doctrine of equivalence. The court noted that it would vitiate the claim limitation to apply the doctrine of equivalence:

  "Because Seachange concedes that C-COR does not literally infringe, there can only be infringement under doctrine of equivalents. "[T]he determination of infringement under the doctrine of equivalents is limited by two primary legal doctrines: (1) prosecution history estoppel and (2) the 'all elements' rule." Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003). The application of these doctrines is a question of law. Id. "[T]he 'all elements rule' provides that the doctrine of equivalents does not apply if applying the doctrine would vitiate an entire claim limitation." Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005). As noted supra Part II.B.1, we construed "network for data communications" to cover only "those networks in which every processor system is connected to every other processor system via direct, point-to-point, two-way channel interconnections." Seachange's equivalents theory implies that a network in which every processor is connected to every other processor through indirect interconnections can be equivalent to a network in which every processor is connected to every other processor by direct, point-to-point interconnections. However, equivalents under such a theory would vitiate the requirement that every processor be connected to every other processor point-to-point, and therefore must fail as a matter of law. See Asyst, 402 F.3d at 1195 (explaining that finding "unmounted" equivalent to "mounted on" would vitiate the limitation)."

• The Federal Circuit directed that the district court reconsider its ruling as to whether judgment as a matter of law should be granted to defendant on the basis of anticipation in light of the altered claim construction. (Slip Opinion at 32.)
• The court held that a new trial should be conducted as to claim construction in light of the district court's error in failing to instruct on the construction of the term "distributed computer system":

  "Because the district court erred in interpreting "network for data communications" and C-COR does not infringe as a matter of law, we reverse the judgment of infringement. Because we have construed the "network" limitation to be limited to point-to-point interconnections, we affirm the denial of C-COR's motion for JMOL on inadequate written description. Because the district court correctly denied C-COR's motion for JMOL on anticipation as to the Frey and Mendelsohn references, we affirm that ruling. For the reasons stated in this opinion, we vacate the denial of the motion as to anticipation by Gardner and remand the same to the district court for reconsideration. Because the district court erred in its interpretation of "distributed computer system" and because C-COR was prejudiced by the court's failure to properly instruct the jury on the construction of the "distributed computer system" limitation, we reverse the district court's denial of C-COR's motion in the alternative for new trial and remand for further proceedings consistent with this opinion."