On 3rd March 2014, Apple, Inc. (Apple) lost a case against Ancora Techs., Inc. The case was relating to claim construction (understanding the meaning of claims). This case illustrates the importance of writing clear claims and how clearly worded claims save the day, if and when a patent gets involved in a litigation.
The case facts in brief are:
- Ancora Technologies, Inc. (Ancora), owns U.S. Patent No. 6,411,941, which claims a method for restricting software operation based on software license on a computer.
- In December 2010, Ancora sued Apple Inc., alleging that products running Apple’s iOS operating system infringed the ’941 patent, asserting one independent claim (claim 1) out of a total of two independent claims (claims 1 and 18).
- Apple argued that the term “program” (which is to be verified for authorization under a license) is limited to an application program, i.e., one that relies on an operating system in order to run, thus excluding an operating system itself.
- The patent specification makes reference to a hard disk as a volatile memory, which is probably an inadvertent error. Therefore, Apple argued that the terms “volatile memory” and “non-volatile memory” are indefinite because an example given in the specification is irreconcilable with the ordinary meaning of the terms.
- The United States District Court for the Northern District of California construed the claims, and agreed with Apple’s view on the definition of “program” and disagreed with Apple on the definition of “volatile memory” and “non-volatile memory”.
- Both sides appealed to the Federal Circuit, with Ancora appealing on the definition of “program” and Apple cross-appealing on the definition of the terms “volatile memory” and “non-volatile” memory.
- Federal Circuit court of Appeals decides in favor of Ancora.
This case illustrates the importance of using the right terms in claims and supporting the meaning of the terms through appropriate language in the specification to provide the broadest meaning possible. The case went in Ancora’s favor because of the following reasons:
- Claims were worded clearly using terms that were well known and understood in the field,
- Terms appropriate to the scope of the claim were used, and
- Specification provided clear support to the terms used in the specification by not limiting the meaning of the words and by not changing the meaning of the words.
In reversing the district court’s interpretation of the term “program”, the federal circuit court noted 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.
Claim 1 of the patent referred to “program” whereas claim 18 referred to “application program”. Therefore, the term “program” in claim 1 was deemed to have a braoder meaning compared to the term “application program” used in claim 18. Further, the specification did not place any limitations on the “term” program.
Similarly, the term “volatile memory” was associated with the commonly known meaning, even when there was an error in the specification where an example of non-volatile memory was referred to as volatile memory.
A patent writer can be his own lexicographer. In other words, he can define commonly understood terms differently in a specification. And, it is common for practitioners to make things in a specification complex by using words and terms in a completely different context and/or by using complex sentences, just for the sake of making the specification read like a “legal” document. However, as we see in this case, keeping it simple and straight forward has its own benefits!
By, Arun Narasani, Founder, ipMetrix
If interested, you can learn more about claim drafting here.
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