CAFC Partially Reverses PTAB on Claim Construction Analysis, Says Prosecution History Matters

By Eileen McDermott
March 15, 2020

“Even where ‘prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.’” – CAFC

The Federal Circuit on Friday reversed the Patent Trial and Appeal Board’s decision holding certain claims of Personalized Media Communications, LLC’s (PMC’s) U.S. Patent No. 8,191,091 (the ’091 Patent) unpatentable on anticipation and obviousness grounds but affirmed the decision as to the remaining claims. The Court found that the Board erred in its claim construction of one of the claim terms at issue due to its dismissal of the prosecution history.

The ’091 Patent is directed to “methods for enhancing broadcast communications with user-specific data by embedding digital signals in those broadcast communications.” In March 2016, Apple Inc. filed a petition requesting inter partes review (IPR) of claims 13–16, 18, 20, 21, 23, 24, 26, 27, and 30 of the ’091 patent.

The Board ultimately held the challenged claims anticipated and obvious based on its construction of various claim terms. Apple Inc. v. Personalized Media Commc’ns, LLC, No. IPR2016-00755, 2017 WL 4175018 (P.T.A.B. Sept. 19, 2017)

According to the Court’s opinion, “PMC argued that the broadest reasonable interpretation of the claim phrase ‘an encrypted digital information transmission including encrypted information’ must be limited to entirely digital transmissions—i.e., ‘an information transmission carrying entirely digital content at least a portion of which is encrypted.’ Apple disagreed and said that the broadest reasonable interpretation is not so limited, and may also include transmissions with information that is not encrypted or digital—i.e., ‘an information transmission that is partially or entirely digital, at least a portion of which is encrypted.’ Id. (quoting J.A. 192).”

The Board agreed with Apple. It said:

[A]n “encrypted digital information transmission including encrypted information” includes at least some encrypted digital information, and does not preclude, with that transmission, non-encrypted information or scrambled analog information. In other words, the “transmission” requires some encrypted digital information, but does not preclude other information such as non-encrypted information or analog information, and “encrypted information” does not preclude scrambled analog information. Id. at *9

PMC’s request for rehearing challenged the Board’s decision based on statements made in the prosecution history, but the Board rejected this reliance, stating “the prosecution history presents a murky picture as opposed to a clear waiver.” The Federal Circuit disagreed with this approach and found that the prosecution history statements supported PMC’s interpretation and construction of the phrase “encrypted digital information transmission.”

On the role of prosecution history in claim construction more broadly, the Court said:

The prosecution history, in particular, “may be critical in interpreting disputed claim terms because it ‘contains the complete record of all the proceedings before the Patent and Trademark Office, including any express representations made by the applicant regarding the scope of the claims.’” Sunovion, 731 F.3d at 1276 (quoting Vitronics, 90 F.3d at 1582). Accordingly, even where “prosecution history statements do not rise to the level of unmistakable disavowal, they do inform the claim construction.” Shire Dev., LLC v. Watson Pharm., Inc., 787 F.3d 1359, 1366 (Fed. Cir. 2015).

In interpreting the phrase “an encrypted digital information transmission including encrypted information,” the Court initially found that both the Board’s and PMC’s interpretations were plausible. The Board had found that “‘encrypted information’ must accommodate analog signals based on the presence of ‘programming’ in the independent claims, along with certain dependent claims that further specify that encrypted information includes ‘television programming.’” However, while the Court agreed that “programming” could encompass analog signals, it did not agree that it necessarily requires them. “But even if we assume that ‘programming’ necessarily includes analog signals, PMC’s interpretation would still remain plausible,” said the Court, because “the ‘digital’ modifier for ‘transmission’ could still serve as a limit on the scope of the claim such that the dependent claims cover only all-digital transmissions of television programming.”

The Court’s decision to ultimately side with PMC was based on three statements made by PMC during the prosecution history that limited the scope of the claims to all-digital transmissions. “During prosecution, the applicant repeatedly and consistently voiced its position that encryption and decryption require `a digital process in the context of the ’091 patent,” said the Court. “The applicant never abandoned that position. Indeed, the applicant amended the claims—giving rise to the claim term at issue on appeal—only to clarify its position that “encryption requires a digital signal.”

The Board’s rejection of this evidence based on the view that the statements did not “constitute a clear and unmistakable surrender sufficient to rise to the level of disclaimer” was mistaken, said the Federal Circuit.

As to claims 26, 27, and 30, since they did not include the disputed claim term and instead recited “an information transmission including encrypted information,” the relevant prosecution history statements and amendments did not apply to those claims. PMC had conceded these claims included mixed digital and analog signals within their scope, so the Court thus affirmed the Board’s unpatentability determination on them.

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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