Pre-Internet Patent Specification Fails to Anticipate Internet-Based Embodiments

In Catch Curve v. Venali, the plaintiff owns five patents covering a fax transmission technology. The first patent was filed in 1988, well before commercialization of the Internet.

All five patents referred to a common specification. The specification makes clear that fax messages are sent and received over a switched telephone network using fax protocol. At the Markman hearing, the district court limited the patents to communications routed over a switched telephone network.

The defendant has a later-generation fax technology that relies on IP protocol instead of fax protocol. The defendant’s system converts messages into formats other than fax protocol before storing or forwarding the messages and then transmits the messages to their intended destinations via SMTP, HTTP, or HTTPS protocol over the Internet.

Based on this difference in protocols, the district court entered summary judgment of non-infringement.

Catch Curve argued on appeal the patent claims are not limited to a specific protocol. According to Catch Curve, a fax message refers to the “image data” that is transmitted by a fax machine, independent from the transmission protocol used. This argument, however, ignores the specification, which specifies that fax messages are sent and received over a switched telephone network using fax protocol.

In patent claim construction, the metes and bounds of claims are restricted to the embodiments (practical examples) of the invention set out by the inventor in the specification.

The claims are always read in the context of the specification, and may not exceed the embodiments set forth in the specification by the inventor.

In the instant case, because the specification was first filed in 1988, a reference to “existing fax terminal machines” pertains to technology as it existed at that time. Nothing in the specification suggests that the fax messages of the invention are converted to a different format and transmitted to the recipient over a medium other than a switched telephone network.

This non-precedential opinion highlights the practical difficulty of reading pre-Internet patent claims onto Internet-based systems. The case also reinforces Federal Circuit teaching that the patent specification is always highly relevant to claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.

For a general discussion of claim construction rules see, The Basics of Patent Claim Construction.

Prevailing counsel in the case was John C. Carey, Miami.

The Federal Circuit panel included Judge Pauline Newman, Judge William C. Bryson, and Judge Timothy B. Dyk. The Federal Circuit opinion is non-precedential.

The trial judge was Dean D. Pregerson, Central District of California.