Indacon v. Facebook, App. No. 15-1129 (Fed. Cir. 2016)
Indacon’s U.S. Patent No. 6,834,276 covers an improved database system that adds “custom links” so that instances of a “link term” would point to a particular file in the database. Thus, applying this in LinkedIn, you might find that references to “Dennis Crouch” point to my LinkedIn profile. Of course, the way that Facebook & LinkedIn operate does not create the pointer-link for all occurrences of the term.
During claim construction, the district court determined that the asserted claims required that all instances of a specified link term be identified and linked. Although not expressly claimed, the district court found that the all-instances requirement should be found in the definition of “link term” and “custom link.” On appeal, the Federal Circuit has affirmed.
As the first step in the de novo claim construction analysis, the appellate panel determined that the claimed “link term” and “custom link” had no defined meaning in the art – a factor making the specification and prosecution history even more important in the analysis. As the next step, the court looked to the specification that called for automated tagging a link term “when [it] is encountered in a file or document.” and for “association of any selected link term with any of the plurality of files in the selectable database.” In my mind, these are ambiguous at best in terms of requiring all instances be identified. The clincher, however, was buried in the prosecution history where the patentee explained that the operation works by linking “every instance of a specified word . . . [and again] associate all instances of a specified word with a specific file.”
The statements from the prosecution history were sufficient for the court to affirm that the “every instance” should be imported into the claim term construction.
“[T]he interested public has the right to rely on the inventor’s statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given.” Fenner Invs., Ltd. v. Cellco P’ship, 778 F.3d 1320 (Fed. Cir. 2015). Here, the patentees repeatedly described their invention both in the specification and the prosecution history as allowing “every instance” or “all instances” of a defined term to be identified and displayed as a link. Under these circumstances, the district court did not err in limiting the link claim terms as such.
Strict Limits on Claim Differentiation: Indacom’s best argument stemmed from the language of non-asserted claims. In particular, some of the claims required linking of “instances” of a term while other claims required linking “all instances.” The implication here is that the “instances” does not require “all instances.”
On appeal, Judge Stoll indicated that the claim differentiation argument only applies in a narrow range of cases — where claims are otherwise identical in scope. “[W]e have declined to apply the doctrine of claim differentiation where, as here, the claims are not otherwise identical in scope.” Citing World Class Tech. v. Ormco, 769 F.3d 1120 (Fed. Cir. 2014) and Andersen v. Fiber Composites, 474 F.3d 1361 (Fed. Cir. 2007).
Although it is still probably not enough to win the case (and thus a harmless error for this case), Judge Stoll’s statement of the doctrine is unduly limiting and will likely be harmful in future cases. This is, however, the approach suggested by Professor Lemley in his 2008 article: “First, courts should not use the doctrine unless the claims in question are in an independent-dependent relationship.” Mark A. Lemley, The Limits of Claim Differentiation, 22 BERKELEY TECH. L.J. 1389 (2007).
Rather than relying upon claim differentiation – the better approach may be to expressly differentiate the claims to indicate the difference. Thus, rather than just “instances” the claims could have said “at least some instances.”