Non-parallel claim scope can create patent production history, as well as other trouble when the patent is litigated.
Cooper is the owner of the ‘428 patent that is directed towards mass messaging systems, where a message is received from a gateway and forwarded to end users. The purpose of Cooper is to allow a plurality of end users to receive a message without overloading a communication point. In cooper, an initial message is received, converted into “a gateway message” with information identifying users who will receive the message, and forwarded to the end users.
At issue at this case are two independent claims (claims 1 and claim 12) of the ‘428 patent which are reproduced below.
1. A communication method comprising:
registering a plurality of users for receiving messages;
determining, in response to receiving a first message from at least one alert originator, one or more user terminals to receive a second message corresponding to the received first message, each of the one or more user terminals being associated with at least one registered user;
converting the first message to one or more gateway messages; and
transferring each of the one or more gateway messages to one or more corresponding communication gateways for distribution of the second message by the one or more communication gateways to each of the registered users associated with at least one message group, wherein the transfer is performed using a non-voice channel;
wherein converting further comprises reformatting, for each of the one or more gateway messages, the first message received from the alert originator to a format in which the communication gateway associated with the gateway message will accept and perform operations in response to the incoming gateway message and forming an address for each of the one or more gateway messages to include the domain name information associated with the communication gateway or the user identification information associated with the registered user receiving the second message.
12. A communication system comprising:
a first messaging subsystem which may be coupled to an alert originator and to one or more communication gateways, wherein each of the gateways is also coupled to at least one user terminal, and wherein the first messaging subsystem associates a unique set of message parameters with each of the communication gateways;
wherein the first messaging subsystem is configured to transmit at least one gateway message to a plurality of the user terminals via the one or more communication gateways, in accordance with each set of the unique message parameters for each communication gateway, upon receiving a first message from the alert originator;
wherein the first messaging subsystem is configured to reformat, for each of the one or more gateway messages, the first message received from the alert originator to a format in which the communication gateway associated with the gateway message will accept and perform operations in response to the incoming gateway message; and
wherein the first messaging subsystem is configured to form an address for each of the one or more gateway messages to include the domain name information associated with the communication gateway or the user identification information associated with the registered user receiving the second message.
Claim 1 in this case is not directly an issue on appeal, but it is relevant to the discussion of this case because claim 1 and 12 include different limitations.
Claim 1 essentially takes a first message, converts it into a gateway message, sends the gateway message to the communications gateway, and the communications gateway distributes a second message to end users registered to that gateway. Claim 12 converts a first message into a gateway message, then the communications gateway transmits the gateway message to the registered end users.
Initially Cooper filed suit against Twitter for claims 1-18 of the ‘428 patent, but withdrew claims 1-11 after an Examiner in an inter partes request rejected claims 1-3, 5, and 8-11. Essentially, the Examiner found that claim 1 required that a new, second message be sent to the end users, whereas claim 12 required that the gateway message itself be send to the end users. The district court relied on the differences in the claim language of claims 1 and 12, as well as the prosecution history of the case in construing the language. The district court compared claims 12 claim requiring the gateway message be transmitted to a plurality of user terminals with claim 1’s language reciting transferring each of the one or more gateway messages to a communications gateway.
Therefore, the district court found that the difference in the claim language require the communications gateway of claim 12 to send the received gateway message to the end users. The district court reasoned that because claim 12 required that the gateway message itself be delivered to the end user, the court granted summary judgment of non-infringement of the alleged claims. Specifically, the district court found that the Defendants’ systems did not send a gateway message to the end user. The district court found that in the Defendants’ systems the messages that the end user actually received only contained information for that end user, and was not gateway messages.
On Appeal, the Federal Circuit agreed with the district court on the claim construction of the above discussed terms because the claim language and the reexamination history of claim 12 require that the gateway message be send to the end users. Specifically, the Federal Circuit reasoned that an Examiner’s reasons for differentiating claims 1 and 12, while not dispositive, can be helpful in determining the meaning of the claim’s limitations.
PATENT ATTORNEY TAKE-A-WAYS
1) It is important to have parallel claim scope in inventions. Parallel claim scope means having the same claim limitations in several different limitations of a claim. Typically, the parallel claim scope is performed via a system claim, a method claim, and a software embodiment of the claim. This is because different infringers may make hardware of the system and only infringe on the hardware portion of the claim but may never implement the system, while another company may use third party hardware to implement a method and only infringe on the method claim but not the system claim. Therefore, during patent prosecution it is important to keep the claim limitations in a single patent have the same claim scope. In this case, by having divergent claim scope, independent claim 1 and independent claim 12 were interpreted to have different meanings. As such, unnecessary additional limitations were read into the claims. What is recommended if different embodiments of the same invention are required or desired is to file multiple patent applications with the same specification. Therefore, arguments presented in a first patent will not be carried over to the second patent application.
2) This case also shows that it is very important to manage prepositions in claims. Prepositions are parts of the claim language that shows the relationship of a noun or system element of a noun to another element in the sentence. In this case, the limitation of transmitting the gateway message to the end user in claim 12 was an issue of how the case was decided. A way to resolve incorrect prepositions or limiting prepositions in claims is to only have one system element perform each of the limitations. For example, if Cooper only had a gateway “receive,” “convert,” or “transmit” the gateway messages without indicating who had transmitted or received the messages, it would have been a much more easy argument for Cooper to make regarding claim construction, as well as leading to broader patent scope.
3) In this case, Cooper had a random “the second message” as a claim limitation. When reviewing claims before paying the issue fee, always remember to make sure that the claims have proper antecedent basis without random limitations thrown into the mix.