United States: A Single Embodiment Does Not Restrict Claim Construction To The Embodiment In The Absence Of A Clear Intention To Do So

In Info-Hold, Inc. v. Applied Media Technologies Corp., No. 13-1528 (Fed. Cir. Apr. 24, 2015), the Federal Circuit reversed the district court's construction of the claim terms "transmit," "message playback device," and "operable to generate and transmit control signals," and remanded for further proceedings.

Info-Hold, Inc. ("Info-Hold") is the owner of U.S. Patent No. 5,991,374 ("the '374 patent"), which is directed to systems, apparatuses, and methods for playing music and messages through telephones and public speaker systems. Info-Hold asserted the '374 patent against Applied Media Technologies Corporation ("AMTC") and Muzak LLC ("Muzak") in separate suits before the same judge. While the AMTC suit was pending, an ex parte reexamination proceeding was filed on the '374 patent, which resulted in a stay of the AMTC suit. The '374 patent later emerged from the reexamination after some claim amendments and cancellation of other claims, and the stay was lifted. The district court subsequently construed claim terms in the Muzak suit, and both Info-Hold and AMTC agreed to be bound by those claim constructions in the AMTC suit.

The district court construed the claim term "transmit" of the '374 patent as "to initiate a contact with and send an electronic signal to another device," and the claim terms "message playback device" and "operable to generate and transmit control signals" consistently with the construction of the claim term "transmit." Slip op. at 5-6 (citations omitted). The constructions effectively required any communication between the server and the message playback device to be initiated by the server, which was a construction favorable to AMTC. Following claim construction, both parties filed a joint stipulation of noninfringement and requested the district court to enter final judgment to allow Info-Hold to appeal the constructions of the three claim terms. Based on the parties' stipulations and request, the district court entered final judgment in AMTC's favor. Info-Hold appealed.

On appeal, the Federal Circuit found that the claim term "transmit" and the specification support a construction that is neutral as to whether the message playback device or the server initiates the transmission. The Court first noted that while the '374 patent specification discloses that the message playback device operates preferably in a receive-only manner, the receive-only manner implies the invention's ability to operate in a manner that the message playback device may transmit. The Court further pointed out that the claims themselves are indeterminate as to which communication endpoint initiates the transmission.

The Federal Circuit explained that it has previously "expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment." Id. at 9 (quoting Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004). The Court further explained that "the scope of the invention is properly limited to the preferred embodiment if the patentee uses words that manifest a clear intention to restrict the scope of the claims to that embodiment." Id. at 10.

The Court first found an absence of a clear intention in the '374 patent specification to restrict the invention's communications to those initiated by the server. The Court further found "a lack of a clear, intentional disavowal of claim scope that would require the incorporation of a step of initiating contact in the construction of 'transmit,'" and found no basis to depart from the term's ordinary and customary meaning. Id. The Court also noted that the claim term "transmit" was not defined by implication, which would require the patentee to have used the term throughout the specification in a way that was consistent with only one meaning.

The Federal Circuit further, contrary to AMTC's invitation, declined to analyze the case under Wang Laboratories, Inc. v. America Online, Inc., 197 F.3d 1377 (Fed. Cir. 1999). The Court explained that it "never read Wang to stand for the proposition that a patent's claims are limited to the subject matter discussed in the sole embodiment of a patent." Slip op. at 11. Unlike in Wang, the Court stated that "the '374 patent does not support a reading that restricts the term 'transmit' to one meaning," and AMTC did not point to any disclaimer in the intrinsic evidence that would restrict the term to server-initiated communications. Id. Thus, the Court concluded that the claim term "transmit" should not be limited to server-initiated transmissions, and reversed the district court's construction of the term "transmit."

For the remaining two claim terms—"message playback device" and "operable to generate and transmit control signals"—the Court stated that their construction depends on the construction of the term "transmit," and therefore also reversed the district court's construction of these terms. The Court further declined to construe the claim term "when a caller is placed on hold," noting that the parties had agreed to be bound by the construction rendered in the Muzak case and the parties' arguments of the term in this case were not materially different from the arguments presented in the Muzak case.

Accordingly, the Federal Circuit reversed the district court's claim construction as to the terms "transmit," "message playback device," and "operable to generate and transmit control signals," and remanded for further proceedings.

Judges: Reyna (author), Wallach, Taranto

[Appealed from S.D. Ohio, Judge Black]

This article previously appeared in Last Month at the Federal Circuit, May, 2015.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.