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One Method Feature in Apparatus Claim Destroys Validity

By Peter Zura

Rembrandt Data Technologies, LP v. AOL LLC et al., No. 08-cv-1009 (E.D. Va., August 2, 2009, order) (B. Lee)

Notorious NPE Rembrandt sued AOL and a host of other companies over patents relating to dial-up modem technology. At the summary judgment phase, defendants moved the court to find that one of the claims was invalid under section 112 on the grounds that it is "fatally flawed" for mixing a method and apparatus claim in relevant part, the claim reads:

A data transmitting device for transmitting signals corresponding to an incoming stream of bits, comprising:

first buffer means for . . .
fractional encoding means for . . .
second buffer means for . . .
trellis encoding means for trellis encoding the frames from said second
buffer means; and
transmitting the trellis encoded frames.

Both parties admitted that the claim contained an error. However, Rembrandt relied in part on the Fed. Cir. ruling that "[a] district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification; and (2) the prosecution history does not suggest a different interpretation of the claims." Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).

Rembrandt argued the claim should be edited to change "transmitting the trellis encoded frames" to "a transmitter section for transmitting the trellis encoded frames." According to Rembrandt, the edit is justified "because the error is so plain and known by anyone in the field there can be no question that the claim as written includes an obvious error."

Defendants argued that the proposed edit "would significantly alter the meaning of one element, changing it from a method step to an apparatus step. This is beyond the ordinary types of corrections allowed by courts . . . there is no evidence to support Rembrandt's assertion that a 'typographical' error occurred. The application claim . . . issued in the identical form as the applicants submitted it to the Patent Office. [The claim], therefore, was invalid from [the] day the application was filed."

The district court agreed with the defendants:

Rembrandt has failed to demonstrate that the language at issue is anything other than what it submitted to the Patent and Trademark Office. Edits by district courts are generally made in instances where the change is extremely minor and/or obvious. This is neither. The impact of the change proposed by Rembrandt would have a colossal effect, and is far from minor or obvious. The Court therefore grants Canon's Motion for Summary Judgment with respect to the '236 claim based on the invalidity of the claims stemming from the mixture of apparatus and method claims because it would be improper for the Court to undertake the revision proposed by Rembrandt as it is not minor, obvious, free from reasonable debate or evident from the prosecution history.

Read/download the order here (link).

NOTE: There was also an interesting issue regarding infringement, where the accused modems were capable of operating in an infringing manner, but middleware prevented them from doing so during normal operation. The district court followed the Federal Circuit's Telemac Cellular ruling to hold that "the fact that an accused 'device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement.'"

Full post as published by Two-Seventy-One Patent Blog on August 31, 2009 (boomark / email).