Bradium Technologies v Iancu
Nos. 2017-2579, 2017-2580 Fed. Cir. May 13, 2019 Before Circuit Judges Moore, Reyna and Chen.
Microsoft Corporation (“Microsoft”) petitioned the Patent Trial and Appeal Board (“the Board”) for inter partes review of claims of U.S. Patent Nos. 7,908,343 and 8,924,506 (the “Patents”). The Federal Circuit affirmed the Board’s finding that the claims were unpatentable as obvious. After Bradium Technologies LLC (“Bradium”) appealed, Bradium and Microsoft settled their dispute.
After institution of the IPR, Bradium proposed a construction for the term “limited bandwidth communications channel,” seeking to limit its meaning to “a wireless or narrowband communications channel.” The Board rejected Bradium’s proposed construction and adopted the term’s plain and ordinary meaning, which it concluded was “a communications channel whose bandwidth is limited.”
The Federal Circuit affirmed the Board’s claim construction, stating “a single statement in the written description does not serve as clear indication that the patentee meant to redefine the term ‘limited bandwidth communications channel’ to include a specific cause for the bandwidth limitation.” The Federal Circuit went on to say that “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” A single embodiment with the proposed construction is not enough. Moreover, using a word in the same manner in all embodiments is not a clear expression of intent to adopt a specific meaning of a term.
Upon finding agreement with the Board’s claim construction, the court found that the cited prior art reference disclosed the claimed “limited bandwidth communications channel.” The Federal Circuit also found that other elements of claims of the Patents were present in the prior art reference, and affirmed the Board’s finding of obviousness under 35 USC §103. In doing so, the court considered not only what the reference expressly taught, but also what the reference “would fairly suggest to a person of ordinary skill in the art.”
The Federal Circuit further concluded that Bradium waived its argument regarding the prior art’s teaching of “prioritization,” since its position before the Board on this subject was not as particularized as its position on appeal.
Read more: Federal Bar member attorneys may access the full case summary by Barnwell Whaley attorney Bill Killough in the June issue of Federal Circuit Case Digest
Additionally, you may read the full opinion here.
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B.C. “Bill” Killough is a registered patent attorney with Barnwell Whaley law firm with offices in Charleston, SC and Wilmington, NC. On behalf of his clients, Bill has obtained more than 300 United States patents, participated in prosecuting more than 100 foreign patent applications and he has filed more than 1000 trademark applications with the US Patent and Trademark Offices.
