Narrow Construction May Apply When No Evidence Supports Broader Construction

McDermott Will & Emery

McDermott Will & Emery

Addressing claim construction issues, the US Court of Appeals for the Federal Circuit affirmed a claim construction limiting “communications path” to wired communications. Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC, Case Nos. 15-1425; -1438 (Fed. Cir., May 31, 2016) (Reyna, J) (Stark, J, dissenting).

Innovative Wireless Solutions (IWS) sued several dozen hotels and coffee shops for patent infringement, alleging that they infringed the asserted patents by providing wifi internet access using off-the-shelf wifi equipment. In response, the wifi equipment providers, Ruckus and Cisco, filed for declaratory judgment of invalidity and non-infringement.

The central dispute was whether the claimed “communications path” covered wireless communications. IWS argued that “communications path” covered both wired and wireless communications, while Ruckus and Cisco argued that it should be limited to only wired communications. Agreeing with Ruckus and Cisco, the district court adopted a construction limiting “communications path” to wired communications. After the parties stipulated to a final judgment of non-infringement based on that construction, IWS appealed.

On de novo review, a divided panel of the Federal Circuit affirmed. Writing for the majority, Judge Reyna reasoned there was “no intrinsic or extrinsic evidence to support IWS’s assumption that a person of ordinary skill at the time of invention would have understood the plain and ordinary meaning of ‘communications path’ to include wireless communications.” The majority identified several statements from the specification, but acknowledged that “these statements do not expressly exclude wireless communications from the meaning of ‘communications path,’” although “they do not include it, and they discourage that understanding.” The majority also found that construing the claims to encompass wireless communications “would likely render the claims invalid for lack of written description.”

Judge Stark, sitting by designation, dissented. He explained that a remand was necessary because the dispute over the plain and ordinary meaning of “communications path” first arose on appeal. In these circumstances, Judge Stark explained, the court should “not fault the patentee for failing to come forward with extrinsic evidence” but “should give the patentee a chance to do so—particularly because the district court may have to make subsidiary findings of fact in order to construe the claims.” The dissent also disagreed with the majority’s conclusion that the proper construction excludes wireless communications.


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