The Supreme Court has long held that claim construction is a question of law reserved for the court.[1] During claim construction, the proper meaning of a term is construed from the intrinsic evidence and, when appropriate, extrinsic evidence.[2] The intrinsic evidence includes the claims, the specification, and the prosecution history.[3] The weight of the intrinsic evidence is often determinative. Therefore, a patent attorney should maintain a consistent claim construction strategy from the start of prosecution. This strategy should encompass the full scope of the invention. Otherwise, the patent owner will have little protection against infringers.

One helpful strategy is “cross-checking” the list of features. For example, features A and B can both be implemented via X. However, feature A can also be implemented via Y. Therefore, it is important to cross-check whether B can also be implemented via Y. The inventor and the patent attorney should work together, at the start of prosecution, to identify all the features and all the ways each feature can be implemented. Then, cross-checking can be performed.

Failure to cross-check the list of features may result in a narrow claim interpretation, as shown in Intellectual Ventures I LLC v. Capital One Bank.[4] On June 19, 2013, Intellectual Ventures sued Capital One Bank for infringement of U.S. Patent No. 7,260,587 (the ‘587 Patent) which relates to a method of organizing digital images.[5] In the simplest embodiment, hard-copy prints are placed into a desired order. A machine readable instruction form is placed in front of the hard-copy prints. The instruction form is scanned to identify one or more categories associated with the hard-copy prints, e.g., “vacation 1999.” The hard-copy prints are scanned to obtain the digital images. The digital images are manipulated such that each digital image is associated with the one or more categories, according to the instruction form.[6] This allows the user to organize and easily search for specific images.[7]

Claim 1 of the ‘587 Patent recites “digitally scanning a plurality of hard copy prints [that have been grouped into one or more categories, each category separated by] an associated machine readable instruction form”.[8] Capital One Bank argued non-infringement on the basis that the claimed method required a hard-copy instruction form which Capital One Bank did not practice.[9] Intellectual Ventures argued that there was no requirement that the instruction form be in a hard-copy format.[10] The District Court construed the terms “machine readable instruction form” to require a hard-copy format, rather than an electronic format.[11] The parties stipulated there was no infringement.[12] Intellectual Ventures appealed.

On appeal, the Federal Circuit reviewed the District Court’s claim construction de novo and ultimately affirmed that the “machine readable instruction form” must be in a hard-copy format based on the intrinsic evidence.[13] First, the claim language suggests the machine readable instruction form must be in a hard-copy format to physically separate the categories of hard-copy prints before scanning.[14] Second, the specification of the ‘587 Patent consistently describes the machine readable instruction form as a hard-copy document, and there are no examples of the machine readable instruction form being anything other than a hard-copy document.[15] The provided examples describe that instructions are written on a machine readable instruction form, the machine readable instruction form is physically placed in an envelope with the hard-copy prints, and the machine readable instruction form is then physically placed in front of the hard-copy prints before scanning. Third, during prosecution, in response to an office action, the Applicant argued that the instructions are digitally scanned, stating that this was “clearly a physical step.”[16] Therefore, the patentee did not maintain a consistent claim construction strategy in prosecution and litigation.

Here, the patentee should have used varied examples to show different embodiments of the feature at issue. The patentee also should have performed cross-checking. In fact, the specification discussed another feature of the invention (the user instructions, i.e. how to use the method generally) that could be in audio or visual format.[17] The court believed this discussion showed the patentee could have discussed the feature at issue (the machine readable instruction form) also being in audio or visual format. [18]

In this instance, the patentee would have benefitted from cross-checking feature A (i.e. the user instructions) and feature B (i.e. the machine readable instruction form.) Feature A can be implemented via X (i.e. hard-copy format), Y (i.e. audio format), and Z (i.e. visual format). Feature B can be implemented via X. Therefore, the patentee should have cross-checked whether feature B can also be implemented via Y and Z. Then, the patentee would have been motivated to use more varied examples to describe the different ways each feature can be implemented via Y and Z. The patentee also would have maintained a consistent claim construction strategy in prosecution and litigation.

Thus, at the start of prosecution, the patent attorney should discuss different embodiments with the inventor and cross-check the list of features. This strategy will help identify whether claim limitations can be met physically versus electronically for the purposes of litigation.

[1] Markman v. Westview Instruments, 517 U.S. 370, 391, 116 S.Ct. 1384, 1396 (1996).

[2] Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc).

[3] See id. at 1314.

[4] See Intellectual Ventures I LLC v. Capital One Bank (USA), 2015 U.S. App. LEXIS 11537, *2 (Fed. Cir. July 6, 2015).

[5] Id. at *3.

[6] U.S. Patent No. 7,260,587, col. 2 ll.11-32.

[7] Id. at col. 5 ll.50-53.

[8] U.S. Patent No. 7,260,587, claim 1.

[9] Intellectual Ventures I LLC v. Capital One Bank (USA), 2015 U.S. App. LEXIS 11537, *16 (Fed. Cir. July 6, 2015).

[10] Id.

[11] Id.

[12] Id. at *4.

[13] Id. at *2.

[14] Id. at *16.

[15] Id. at *17.

[16] Id. at *18.

[17] Id. at *17.

[18] Id.