THE PATENT SPECIFICATION IS THE NAME OF THE GAME NOW

wires

Patent litigants operating under the premise that “the name of the game is the claim” may need to rethink that maxim. Especially if they hope to win on appeal. 

The phrase, famously stated by Giles Rich, co-author of the 1952 Patent Act and former Federal Circuit judge, means claims are the most important element in defining the boundaries of a patent owner’s property. And in U.S. patent law, claims have played that role, overshadowing a patent’s other aspects, since 1836. 

But on May 31, the Federal Circuit agreed with an argument that the term “communications path” in a patent claim doesn’t include wireless communications. Which is a perfectly reasonable ruling, given the specification of the patents at issue in the case. But it means the specification is now a big name player in the game, too. 

The recent case concerns U.S. Patent Nos. 5,912,895, 6,327,264 and 6,587,473, which were awarded to Northern Telecom (Nortel) based on an application filed 20 years ago. 

Innovative Wireless Solutions LLC, assigned the patents, argued that they covered Wi-Fi equipment sold by Cisco Systems Inc. and Ruckus Wireless Inc. to coffee shops and hotels, and sued. But Cisco and Ruckus argued—successfully—that the specification “implicitly disclaimed” wireless communications. They said it described only wired communications, noting that the title included the phrase “via telephone lines.” 

To be clear, wireless local area networks (LANs) existed on May 1, 1996, when the patents were awarded. But Nortel was wireline-centric. And the specification in the patent application never mentioned the word “wireless.” 

On the other hand, wireless network equipment makers at the time might well have used the phrase “communications path” to apply to the same types of communication between pieces of equipment—regardless of any physical differences between the paths. That would be enough if the claim were the name of the game, because a court could construe the patents as wireline/wireless-agnostic. 

But with the Federal Circuit agreeing that a specification can “implicitly disclaim” a technology simply by not mentioning it, a claim will never stand on its own again.

That’s a real shift from the days of Judge Rich. But only two of the court’s active judges today ever sat with Rich. And even adding in the part-time judges with senior status, those who have never served with Rich outnumber those who have, 10-7.