By Jason Rantanen
Chicago Board Options Exchange, Inc. v. International Securities Exchange, LLC (Fed. Cir. 2012) Download 11-1267-1298
Panel: Rader, Wallach (author) and Fogel
If my own conversations are any indicator, many people who follow the Federal Circuit's claim construction jurisprudence have developed strong opinions about the longstanding members of the court. More of an unsolved puzzle are the more recent appointees. In Chicago Board Options Exchange, we get a glimpse into the newest member of the court's thoughts on claim construction in his debut patent law opinion. That opinion suggests an approach closely tied to the patent itself, analyzing the text of the document without reference to extrinsic sources.
Means plus function: One of the claim terms at issue in this appeal was "system memory means for storing allocating parameters for allocating trades between the incoming order or quotation and the previously received orders and quotations." Although the court noted that the parties expressly agreed during claim construction that this was a means-plus-function limitation, the court nonetheless dropped a footnote indicating that even had the argument not been waived, the presumption arising from the use of the word "means" was not overcome because the limitation "system memory means" articulates a function and nowhere includes a "specific and definite structure." Given this statement, it is possible that Judge Wallach may take a broad approach to 112(f), interpreting a wide array of terms to fall within its scope. Or I may be overreading the footnote, given that the claim element did include "means" after all.
In the end, however, the distinction did not matter, as the CAFC interpreted the corresponding structure of "system memory means" to be "system memory." After examining the specification to determine which structure was linked to the means-plus-function element's function, and applying the canon of claim construction that different terms convey different meanings, the court concluded that the "[t]he clearly linked structure associated with this function is “system memory.” Slip Op. at 13-14. It did not include the additional elements identified by the district court.
Looking at the Claims, then the Specification: The CAFC also construed several non-means-plus-function terms, taking a similar approach to each. For each term, the court first looked to the claim language itself to divine any meaning the claims might offer, then turned to the specification to examine whether it provided further support or rebutted the meaning as indicated by the claim. As in the preceding section, the court relied heavily on the different terms/different meanings canon of claim construction.
Specification disavowal: Although for most terms the court found that the specification either supported or did not rebut the meaning of the terms as established by the claims, the court found clear disavowal of claim scope for one term: "automated exchange." "The specification goes well beyond expressing the patentee’s preference for a fully automated exchange over a manual or a partially automated one, and its repeated derogatory statements about the latter reasonably may be viewed as a disavowal of that subject matter from the scope of the Patent’s claims." Slip Op. at 21. Thus, the district court correctly interpreted this term to mean "fully computerized, such that it does not include matching or allocating through use of open out-cry." Id.