Interdigital v. International Trade Commission

• Publication year: 2012

NORTH CAROLINA JOURNAL OF LAW & TECHNOLOGY 14 N.C. J.L. & TECH. ON. 69 (2012)

CRACKING THE CLAIM CONSTRUCTION OF “CODE” IN

INTERDIGITAL V. INTERNATIONAL TRADE COMMISSION

Neil Barnes*

Many patent cases turn on the meaning of terms in the patent claims. Although the standards for interpreting claims are somewhat fluid, there is a need for some degree of rigidity so inventors can protect their inventions. This Recent Development examines how the court in InterDigital Communications, LLC v. International Trade Commission applied various doctrines of patent law to interpret the meaning of “code” in two of InterDigital’s patents. Particularly, this Recent Development focuses on InterDigital’s heavy reliance on the doctrine of claim differentiation in expanding the meaning of “code” beyond its proper scope. A court-sanctioned expansion of a patent term beyond its proper scope could create confusion about what inventions a patent protects. InterDigital also invites the possibility of patent owners or applicants strategically using the doctrine of claim differentiation contrary to the purposes and principles behind the U.S. patent system.

1. INTRODUCTION

   After years of meticulous experimentation and hard work, the American dream has finally come true for a foreign inventor, the increasingly present player in the U.S. patent system.1 The inventor’s gadget has hit the shelves in the technology loving land of America and revenue is flowing in. The inventor has not yet submitted a

   U.S. patent application, but he is by no means unprepared to navigate the U.S. patent system. He paid the best data-mining

   
   

   * J.D. Candidate, University of North Carolina School of Law, 2014.

   1 BUREAU OF INT’L INFO. U.S. DEP’T OF STATE, PROGRAMS, OUTLINE OF THE

   U.S. ECONOMY 125 (2012 ed. 2012) (“Half of all U.S. patents are issued to foreign inventors.”).

   
   

   69

   
   

   research team to perform patentability searches on his invention, and the top patent attorneys assured him his invention would not infringe any patents. Furthermore, the attorneys informed him of the twelve-month grace period, which allows an invention to be sold in the United States for a year before a patent application has to be filed.2 Although the U.S. patent system is complex, at least its rules seem reliable.

   The recent case of InterDigital Communications, LLC v. International Trade Commission3 threatens to throw the standards of the patent system into chaos. The patent attorneys call the inventor and notify him that he could be sued in U.S. court for exporting his inventions to the United States.4 The basis for the suit? Documents which do not contain even a notion of the inventor’s product.5

   The decision in InterDigital expanded the meaning of a claim term beyond what was supported by the specification and a variety of expert testimony, including testimony from the inventor.6 Such an expansion departs from what the inventor intended to disclose and creates the possibility of broadening other patents beyond their proper scope in the future, changing the landscape of patent law. Part II of this Recent Development provides an overview of the relevant aspects of the U.S. patent system. Part III examines how the Federal Circuit has recently applied the doctrine of claim differentiation. In Part IV, the reasoning and principles behind InterDigital are analyzed and evaluated. Part V then examines the significance of the InterDigital holding and how it will affect the future of patent law.

   
   

   2 See 35 U.S.C. § 102(b) (2006).

   3 690 F.3d 1318 (Fed. Cir. 2012).

   1. 19 U.S.C. § 1337(a)(1)(B)(i) (2006) (stating that it is unlawful to import for sale articles that infringe a valid and enforceable U.S. patent).

   2. See U.S. Patent No. 7,190,966 (filed June 29, 2005); U.S. Patent No.

      7,286,847 (filed June 29, 2005).

   3. See InterDigital, 690 F.3d at 1331–33; ’966 Patent; ’847 Patent.

   
   

2. THE U.S. PATENT SYSTEM

   Navigating the U.S. patent system can be a daunting task. The rules of the system are outlined in Title 35 of the United States Code,7 but there are many nuances about the rules and their relations. In addition, many aspects of the patent system are debated to this day. A basic introduction to patents and their interpretation is given below.

   
   

   1. Introduction to Patents

      To obtain a patent, an inventor submits an application to the

      U.S. Patent and Trademark Office (“USPTO”), launching the process known as patent prosecution. 8 A patent examiner then determines whether the application meets the standards of patentability: The claimed invention must be novel, nonobvious, and useful.9 Furthermore, to become an enforceable patent, the patent application must contain an enabling disclosure10 and claims which clearly define the invention.11

      
      

      7 See 35 U.S.C. §§ 1–376 (2006).

      1. 1 DONALD S. CHISUM, CHISUM ON PATENTS Gl-15 to Gl-16 (Matthew

         Bender 2012). The examiner conducts a search of “prior art” to determine if any previous patents or publications disallow the issuance of the patent. Id. at G1-8. Once the examiner has determined whether the application meets the “substantive, formal, and procedural requirements” to be issued into a patent, the examiner notifies the applicant as to whether each claim of the patent has been rejected or allowed. Id. A series of subsequent communications, called “actions,” between the examiner and applicant ensue, during which the applicant can amend the application or present evidence to gain a reexamination. Id. After the final action, the USPTO may issue a patent on any allowed claims, and the applicant can appeal any claims the examiner rejected to the Board of Appeals. Id. Otherwise, the applicant is said to have abandoned those rejected claims, which causes the applicant to lose the benefit of the application filing date for those claims. Id.

      2. Id. at Gl-16 (“[T]hree basic requirements or conditions for . . . patentability [are]: utility, novelty[,] and nonobviousness. . . . An applicant must [also] be [the] original inventor . . . and must have [submitted a patent application within

         one year] of [any] potential statutory bars [to obtaining the patent].”).

      3. Id. at Gl-7 (describing the standard of enabling disclosure, or “enablement,” as such disclosure that allows a person having “ordinary skill in the art to make

         
         

         The specification is a crucial part of the patent application (or future patent) for both litigation and prosecution purposes.12 The specification includes “a complete description of the invention,” the enabling disclosure, and “one or more claims.”13 The description and enabling disclosure provide guidance for the meaning of the terms used in claims as well as the best mode of the invention.14

         During prosecution, claims determine the patentability of an invention because they define the parameters of the invention.15 A claim only “ ‘reads on’ or covers products or processes that contain all of the elements and limitations” present in that claim.16 Thus, to be effective, a claim must not be too broad or too narrow.17 In addition, claims may be written in either independent or dependent form. 18 Independent claims usually stand alone, 19 whereas dependent claims reference a broader independent or dependent claim.20 Dependent claims impose a limitation on the referenced claim.21

         
         

         and use” the described invention “without an undue amount of experimentation”).

      4. Id. at Gl-3.

      5. See MARTIN J. ADELMAN ET AL., CASES AND MATERIALS ON PATENT LAW

         386–87 (3d ed. 2009) (“This important section requires both that the applicant disclose ‘how to make’ and ‘how to use’ the claimed invention.”).

      6. CHISUM, supra note 8, at Gl-21.

      7. 35 U.S.C. § 112 (2006); CHISUM, supra note 8, at G1-21. The specification must disclose the “best mode” of the invention described in the patent. 35

         U.S.C. § 112. This is the embodiment of the invention imagined by the inventor when the inventor created the invention. See id. Other means of carrying out

         the invention may also be disclosed in the specification. See id.

      8. CHISUM, supra note 8, at Gl-3.

      9. Id. at Gl-19 to Gl-20.

      10. See id. at Gl-3 (maintaining that claims which are too broad may cover prior art or describe matter not represented in the specification; in contrast, claims which are too narrow may not cover all possible embodiments of the invention).

      18 35 U.S.C. § 112(c).

      19 See JANICE M. MUELLER, PATENT LAW 84 (3d ed. 2009). Independent

      claims stand alone in that they do not need to reference another claim to define the invention. Id.

      20 35 U.S.C. § 112(d).

      1. See id.

         
         

         A patent owner maintains a right of exclusivity for a claimed invention for a twenty-year period.22 Others are prohibited from “making, using, or selling” the protected invention during that time. 23 If anyone makes, uses, or sells the patented invention during the twenty-year term, without the patent owner’s permission, the patent owner may file a civil suit for infringement against the alleged infringer.24 Infringement is determined on a claim-by-claim basis by examining the claims of a patent and determining if the alleged infringer is doing something that falls within the scope of one or more of the claims.25 Typical remedies for infringement include preliminary and permanent injunctions as well as damages.26

         
         

   2. Interpreting Patents

   Claims are the most useful and persuasive means in determining what subject matter a patent protects.27 The process of determining the legally operative meaning of claims is claim construction.28 Claims can be interpreted using intrinsic evidence such as the specification (including the claims themselves) and the

   
   

   1. 35 U.S.C. § 154(a)(2) (2006). The period of protection begins on the date the patent application is filed with the USPTO and ends twenty years subsequent to that date. Id.

   2. CHISUM, supra note 8, at Gl-8.

   3. Id. at Gl-10.

   4. See id. at Gl-3.

   5. 7 CHISUM, supra note 8, § 20.01.

   6. See Merrill v. Yeomans, 94 U.S. 568, 570 (1876) (establishing the modern doctrine of “peripheral claiming,” which maintains that claims are of primary

      importance in determining what a patent covers); see also Phillips v. AWH

      Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (“It is a...