United States: Embodiments Disclosed In The Specification Do Not Restrict Claim Scope Absent Manifestation Of Clear Intention To Restrict

Info-Hold, Inc. v. Applied Media Tech. Corp., No. 2013-1528, 2015 U.S. App. LEXIS 6774 (Fed. Cir. Apr. 24, 2015)(Reyna, J.). Click Here for a copy of the opinion.

Info-Hold sued AMTC for infringement of USPN 5,991,374, which covers systems, apparatuses, and methods for playing music and messages through telephones and public speaker systems. In the claim construction order, the district court adopted AMTC's proposed constructions and construed "transmit," "operable to generate and transmit control signals," and "message playback devices" to effectively require "any communication between the server and the message playback device to be initiated by the server." Info-Hold appealed.

The district court construed "transmit" to mean "initiate a contact with and send an electronic signal to another device." The court based its construction on the understanding that the patent disclosed "the sending of control signals from the server to the remote playback devices" and that "the remote playback devices were only configured to receive transmissions." Info-Hold argued that the court improperly limited the claims to features disclosed in the preferred embodiment.

On appeal, the Federal Circuit found neither the claim term "transmit" nor the specification suggest a limitation on initiation by a server. The specification disclosed that the "message playback device is preferably operational in a receive-only manner," which implied that it may also transmit. The claims themselves did not indicate which communication endpoint initiates the transmission. Furthermore, even though the specification only disclosed server-initiated embodiments, there was nothing in the patent that "evince[d] a clear intention to restrict the invention's communications to those initiated by the server." The Court also found no clear intentional disavowel of claim scope and accordingly, the district court erred by limiting the claims to server-initiated transmission. The Court reversed and remanded to the district court.

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