Brief Overview:
TLC claims were directed towards systems where an end user could designate different countries where they could receive texts.
The accused products were directed towards systems where different carriers could be selected to communicate with a user.
The outcome of this case was based on claim construction, and the court held among other things that the accused products did not infringe TLC patents because the term “receiving user” as recited in TLC’s claims were directed towards a person, not a person/phone combination, and also because the recitation of determining “if the second country is currently designated by the receiving user” differentiated from the accused products because a country is not synonymous with a carrier since carriers can serve multiple locales.
Austin Patent Attorney Takeaways:
1) Do not use terms interchangeably within your specification. If you do so, both the terms meanings will be used for claim construction and will be interpreted as the broadest possible meaning, which will likely be the way that harms your client the most.
In this case, Technology Patents LLC (TLC) had claim limitations that were directed towards a “receiving user.” In the patent, TLC had interchangeably used the terms “originating user,” “subscriber” and a “receiving user.” In the patent the term “originating user” was described as a person/party who originates a page or constructed the term “subscriber” to refer to a person. The court in this case interpreted the limitations reciting a “receiving user” to be directed towards a party making a phone call, not a party/telephone combination.
2) When writing claims for mobile devices do not include limitations that will be performed by a user. Instead, write the claim limitations from the point of view of the device. If claim limitations are constructed to be actions completed by an end user, then if there are actions that are set as defaults then the claims will not read on these default actions.
In this case, the court determined that TLC claims were constructed to be completed by an end user designating a second country by inputting a selection of the second country. Therefore, any system that did not require an end user to input a country to receive pages would not read on the claim. By creating claims that were directed towards an end user and not an end user device, TLC unnecessarily limited their claims.
3) If claims have limitations directed towards a primary method of performing an action and a limitation directed towards a fall back option, systems that only have a primary action will not read on the claims.
In this case, TLC had claim limitations directed towards “determining” if a second country is designated by a receiving user. Because the accused product always performs a signal action there is no determining to be performed. Therefore, when constructing claims it is important to take into consideration different solutions that may only perform one action, and try to not include multiple fall back positions in your independent claims.