Intellectual Property Law Representation

Claim Construction: Context Over Extrinsic Evidence

by | Jun 13, 2023 | Case Updates

On April 12, 2023, the U.S. Court of Appeals for the Federal Circuit rejected the district court’s claim construction for “computer-readable recording medium” and, as a result, reversed the district court’s ineligibility determination under 35 U.S.C. § 101. Sequoia Tech., LLC v. Dell, Inc., 2021-2267 (Fed. Cir. April 12, 2023).

Grounding the construction in the object of the invention, as stated in the specification, the court found alleged infringer Red Hat’s proposed construction to be “irreconcilable”:

Red Hat emphasizes, as it did before the district court, that the specification states that CRM “includ[es]” non-transitory media, and thus its definition is open-ended and could include transitory media. Appellees’ Br. 73–74. It is true that we have held that the term “including” is open-ended. See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1214 (Fed. Cir. 2008). But this does not mean that “computer-readable recording medium storing instructions” as used in claim 8 and the specification is fairly understood to include transitory signals. “[C]laims . . . do not have meaning removed from the context from which they arose.” Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001); see Phillips, 415 F.3d at 1313 (explaining the importance of reading a claim in the context of the entire patent). Here, not only is the claim term narrower—including the phrases “recording” and “storing”—but also Red Hat’s proposed construction hardly makes sense in the context of the disclosed invention, which relates to hardware storage and says nothing about signals. Indeed, it is hard to imagine how the invention would be implemented as a signal. The specification states that an object of the invention is to provide “a computer-readable recording medium storing a program or data structure”—which seems irreconcilable with a transitory signal. See ’436 patent col. 1 ll. 12–13, 19–20, col. 4 ll. 5–6, 25–26. In short, the use of a term denoting a non-exhaustive list does not eviscerate our obligation to construe terms in the context of the entire patent. The context here makes clear that the term “computer-readable recording medium” cannot encompass transitory media.

Sequoia Tech, 2021-2267 at 11 (emphasis added).

The court emphasized its decision “rests solely on the intrinsic evidence,” while the district court “clearly erred” in considering Red Hat’s position based on expert testimony (extrinsic evidence). Sequoia Tech, 2021-2267 at 11-12.