September 17, 2018

Clearly Defining A Term Without Providing Any Way to Determine When it has Been “Optimized” as Claimed Dooms Claims Under 112

By Bryan K. Wheelock, Principal

In Intellectual Ventures I LLC v. T-Mobile USA, Inc., [2017-2434, 2017-2435] (September 4, 2018), the Federal Circuit affirmed the district court’s determination that the claims of U.S. Patent No. 6,640,248 were indefinite, and vacated and remanded summary judgment of non-infringement because of erroneous claim construction.

At issue was the term “Application-Aware Resource Allocator.” The district court adopted T-Mobile’s construction of “application-aware resource allocator” as requiring that when allocating bandwidth, the application-aware resource allocator must take into account information obtained from the application layer 7.

The Federal Circuit, however, determined that application awareness requires only that the resource allocator allocate resources based on application type, which is discernable with information obtained from any of network layer 3, transport layer 4, or application layer 7. The plain language of the claims, the specification, and the prosecution history all support this construction.

The Federal Circuit further rejected T-Mobile’s arguments about disavowal, noting disavowal is an “exacting” standard under which it must be established that the patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term through expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope, and the statements in the prosecution history did not meet this exacting standard.

On the definiteness issue, the Federal Circuit found that the district court did not erroneously fail to consider the structure after determining that the function was indefinite. The Federal Circuit concluded that the claim requirement of optimizing Quality of Service (QoS) requirements was entirely subjective and user-defined. The Federal Circuit pointed out that the ’248 patent analogizes QoS to “a continuum, defined by what network performance characteristic is most important to a particular user” and characterizes it as “a relative term, finding different meanings for different users.” The patent itself concluded that ultimately, “the end-user experience is the final arbiter of QoS.”

Thus, while the specification clearly defines that the QoS relates to the end-user experience, it fails to provide one of ordinary skill in the art with any way to determine whether QoS has been optimized.