United States: Ordinary Meaning Of Claim Term Prevails In Absence Of Redefinition Or Disclaimer

In Ancora Technologies, Inc. v. Apple, Inc., Nos. 13-1378, -1414 (Fed. Cir. Mar. 3, 2014), the Federal Circuit reversed the district court's construction of the claim term "program" as limited to application programs while excluding operating systems, and affirmed the district court's decision that the terms "volatile memory" and "non-volatile memory" were not indefinite.

Ancora Technologies, Inc. ("Ancora") owns U.S. Patent No. 6,411,941 ("the '941 patent"), which claims methods for verifying that a software program on a computer is licensed.  The '941 patent improves on prior methods for license verification, making the process more difficult to circumvent, by storing encrypted license information in "non-volatile memory" in the computer's basic input/output system ("BIOS").  Claim 1 recites a method comprising "selecting a program residing in the volatile memory" and "using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record."  Slip op. at 3 (emphases added).

Ancora sued Apple, Inc. ("Apple"), alleging that products running Apple's iOS operating system infringed the '941 patent.  In construing the claims, the district court agreed with Apple that "program" in the context of the '941 patent did not have its ordinary meaning and instead construed "program" as limited to an application program, i.e., one that relies on an operating system in order to run, thus excluding the operating system itself.  Ancora stipulated to noninfringement under the district court's construction and appealed.  In contrast, the district court rejected Apple's argument regarding "volatile memory" and "non-volatile memory," finding those terms in the context of the '941 patent were consistent with their ordinary meaning and thus not indefinite.  Apple cross-appealed.

"Under our claim-construction law, a clear ordinary meaning is not properly overcome (and a relevant reader would not reasonably think it overcome) by a few passing references that do not amount to a redefinition or disclaimer."  Slip op. at 11.

On appeal, the Federal Circuit reversed the district court's decision that "program" as used in the '941 patent is limited to application programs.  Noting that Apple had never seriously disputed that "program" ordinarily encompasses both operating systems and applications, the Court explained that "[a] claim term should be given its ordinary meaning in the pertinent context, unless the patentee has made clear its adoption of a different definition or otherwise disclaimed that meaning."  Id. at 5.  After analyzing the '941 patent's claims, specification, and prosecution history, the Court concluded that there was no reason in this case to depart from the term's ordinary meaning.

Starting with the claims, the Federal Circuit held that the claims themselves point against narrowing the term "program" to just application programs.  Explaining that claim 1 refers to the restricted software as simply a "program," while unasserted independent claim 18 recites "an application software program," the Court concluded that, despite the lack of claim dependency, the difference in terminology tended to reinforce, rather than undermine, adoption of the broad ordinary meaning of "program."  Id. (citation omitted).  Turning next to the specification, the Court found nothing that clearly narrowed the ordinary meaning of "program," noting that the general disclosure refers to "software," "a program," or "a software program," without limiting the subject matter to particular types of programs, and the specification discusses using the claimed invention to verify application programs only in nonlimiting examples.  Finally, the Court concluded that the prosecution history statements cited by Apple referred to the verifying software itself, not the "program" being verified, and thus did not support a narrower definition of "program."  Nor did the prosecution history put any clear limit on the timing of verification that would preclude it from verifying the operating system.  Accordingly, the Court held that the district court erred in limiting the claim term "program" to application programs only.

In contrast, the Federal Circuit affirmed the district court's decision that "volatile memory" and
"non-volatile memory" were not indefinite.  Recognizing that "[t]he Supreme Court currently is considering how to refine the formulations for applying the definiteness requirement," the Court nevertheless concluded that the indefiniteness challenge in this case could be rejected without awaiting the Supreme Court's clarification.  Id. at 10 (citing Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, cert. granted 2014 WL 92363 (U.S. Jan. 10, 2014)).  The Court first observed that, most importantly, there was no dispute that the terms "volatile memory" and "non-volatile memory" have a clear, settled, and objective meaning.  The Court then rejected Apple's reliance on three passages from the specification that, contrary to the normal meaning, refer to a hard disk as an example of volatile memory.  According to the Court, "[t]here is no facial ambiguity or obscurity in the claim term," and "the terms at issue have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification."  Id. at 11.  Moreover, the Court did not read the three passages as amounting to either a redefinition or disclaimer, but rather as consistent with a hard disk's routine use as virtual memory to provide temporary storage.  Finally, the Court concluded that the prosecution history showed that both the examiner and the applicants understood that "volatile memory" and "non-volatile memory" retained their traditional definitions.

Accordingly, the Federal Circuit reversed the district court's construction of the claim term "program," affirmed the district court's decision that "volatile memory" and "non-volatile memory" were not indefinite, and remanded for further proceedings.

This article previously appeared in Last Month at the Federal Circuit, April 2014.

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