Patent Claim Construction: Whereby Clause Limits Claim Scope

Hoffer v. Microsoft Corp. (Fed. Cir. 2005) (per curiam).

By Eric Moran

In Hoffer, the patentee (appearing pro se) appealed a summary judgment holding that defendants Microsoft, IBM, and Ariba did not infringe claim 21 of U.S. Patent No. 5,799,151 (the ‘151 patent) and that claim 22 of the ‘151 patent was invalid for indefiniteness. The Federal Circuit reversed the judgment on invalidity and affirmed the judgment of noninfringement. In affirming the judgment of noninfringement, the Federal Circuit affirmed the construction of a “whereby” clause, which “generally states the result of a patented process” and generally does not limit claims. Here, however, as discussed below, the Federal Circuit held that when a “whereby” clause “states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention.”

The ‘151 patent involves methods and systems that allow remote users of computer terminals to obtain economic data from an index, and interactively post and receive messages concerning economic topics. Claim 21 of the ‘151 patent in Hoffer included the phrase:

whereby a trade network supports users at said plurality of [remote user terminals] who are each guided by said [integrated application program interface] to select an economic activity, to identify that index topic that corresponds to said activity, to enter that topic board dedicated to said topic, and who are collectively able to concurrently engage in interactive data messaging on said topic boards.< ?xml:namespace prefix ="" o />

The accused method allows real-time posting of messages, but not interactive data messaging in which users can communicate with each other.

The patentee argued that under Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003), a “whereby” clause cannot limit method claims when the “whereby” clause simply states the intended result of a method step. In particular, the patentee contended that the “whereby” clause in claim 21 did not state the mechanics of the claimed method, but only stated an overall objective, and, moreover, his invention does not require interactive messaging.

The Federal Circuit disagreed, finding that, based at least on the “Summary of the Invention” section of the patent and statements in the prosecution history, interactive messaging “is more than the intended result of a process step; it is part of the process itself. . . . [It is] an integral part of the invention.” Thus, the Federal Circuit held that the “whereby” clause stated a condition that was material to patentability, and claim 21 was limited to interactive messaging and did not extend to real-time posting of messages.

Judge Newman, in a panel that also included Judges Bryson and Dyk, authored a concurrence in which she disagreed with the panel’s failure to decide each of the appealed claim construction issues.

Eric Moran (moran@mbhb.com) is an attorney at the intellectual property law firm of McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. His practice runs the gamut of intellectual property issues and includes patent, trademark, and domain name disputes.

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