On April 25, 2019, United States District Judge Jed S. Rakoff (S.D.N.Y.) ruled that in the context of a patent, there are times when the conjunctive claim term "and" can be interpreted to mean a disjunctive "or".  Judge Rakoff ruled that this was the case with the claims of U.S. Patent No. 9,736,689. 

In this dispute, SIMO alleges patent infringement based on uCloudlink's sales of certain mobile devices offering WiFi hotspots that enable users to access data services while traveling abroad without incurring roaming fees.  In the context of granting a motion for summary judgement of infringement and validity, Judge Rakoff found it necessary to construe certain claim terms, including the term “and” appearing in the preamble of an asserted claim.

The parties, through their cross-motions, contested whether this preamble should be treated as limiting. Judge Rakoff admonished both sides for failing to raise their dispute during earlier claim construction proceedings, effectively "kick[ing] the can down the road," but ultimately sided with defendants, and concluded that the preamble provided necessary structure, e.g., processors and programs stored in memory, and antecedent basis for the actions provided in the body of the claim.

Having concluded that it was limiting, Judge Rakoff went on to resolve disputes as to the meaning of the preamble, which reads:

A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database, at least one of the plurality of programs stored in the memory comprises instructions executable by at least one of the plurality of processors for:

Of note, Judge Rakoff considered whether the list of components in the preamble should be construed as conjunctive of disjunctive.[1]  While acknowledging that the list concludes with the conjunctive "and," Judge Rakoff nevertheless concluded that, in light of the specification, which describes the non-local calls database as optional, the "and" preceding that term should be read as "and/or."  Doing otherwise, according to the Judge, would contradict the specification. Judge Rakoff further noted that his decision "was bolstered by the fact that the preamble is a bit of a mess grammatically, no matter what reading is assigned to it."

Case: Simo Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 18-CV-5427 (JSR), (S.D.N.Y. April 25, 2019).

[1] Siding with uCloudlink, Judge Rakoff first ruled that "non-local calls database" is a separate list item. He rejected SIMO's contention that the database is merely an alternative location for storing authentication data.  In support, Judge Rakoff noted that the specification described the "non-local database" as storing location codes and not authentication data.