Straight Path Ip Group, Inc. v. Sipnet Eu S.R.O.

United States Court of Appeals
for the Federal Circuit
______________________
STRAIGHT PATH IP GROUP, INC.,
Appellant
v.
SIPNET EU S.R.O.,
Appellee
______________________
2015-1212
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-
00246.
______________________
Decided: November 25, 2015
______________________
JAMES M. WODARSKI, Mintz, Levin, Cohn, Ferris,
Glovsky and Popeo, P.C., Boston, MA, argued for appel-
lant. Also represented by WILLIAM MEUNIER, NICHOLAS
ARMINGTON, SANDRA BADIN, MICHAEL NEWMAN, MICHAEL
T. RENAUD, ADAM PHILLIP SAMANSKY.
SANJAY PRASAD, Prasad IP, PC, Los Altos, CA, argued
for appellee. Also represented by PAVEL POGODIN, Trans-
Pacific Law Group, Palo Alto, CA.
2 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
BRIAN K. ERICKSON, DLA Piper US LLP, Austin, TX,
for amici curiae Samsung Electronics Co., LTD, Samsung
Electronics America Inc., Samsung Telecommunications
America LLC. Also represented by AARON FOUNTAIN,
Houston, TX; MARK D. FOWLER, East Palo Alto, CA.
______________________
Before DYK, TARANTO, and HUGHES, Circuit Judges.
Opinion for the court filed by Circuit Judge TARANTO.
Opinion concurring in part and dissenting in part
filed by Circuit Judge DYK.
TARANTO, Circuit Judge.
Straight Path IP Group, Inc. owns U.S. Patent No.
6,108,704, entitled “Point-to-Point Internet Protocol,”
which describes certain protocols for establishing commu-
nication links through a network. On a petition for inter
partes review filed by Sipnet EU S.R.O., the Patent Trial
and Appeal Board cancelled claims 1–7 and 32–42 of the
’704 patent based on determinations of anticipation and
obviousness. Sipnet EU S.R.O. v. Straight Path IP Group,
Inc., IPR 2013-246, 2014 WL 5144564 (PTAB Oct. 9,
2014). We now reject a claim construction on which the
Board relied for its decision. We reverse the Board deci-
sion, and we remand for further proceedings under the
correct construction.
BACKGROUND
The ’704 patent identifies a deficiency in what the
prior art taught about real-time voice or video communi-
cations between two processing units over a network, such
as the Internet. According to the specification, the prior
art disclosed successful protocols for such point-to-point
communication between users and devices that main-
tained permanent network addresses. ’704 patent, col. 1,
lines 48–52. But for systems in which addressing is
dynamic, i.e., in which devices obtain only temporary
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 3
addresses on a network, “point-to-point communications
in realtime of voice and video have been generally difficult
to attain.” Id., col. 1, lines 53–56. To solve the problem,
the summary of the invention identifies a “point-to-point
Internet protocol” that “exchanges Internet Protocol (IP)
addresses between processing units to establish a point-
to-point communication link,” based on the first unit’s
querying “a connection server to determine the on-line
status of” a second unit. Id., col. 1, lines 59–61, col. 2,
lines 1–2. The summary also identifies a second protocol,
which involves email signaling. Id., col. 2, lines 10–21.
The specification provides some details of operation—
whose significance for claim construction is disputed, as
discussed below. A processing unit, upon joining a net-
work such as the Internet, automatically transmits its
temporary network address and email address to a con-
nection server. Id., col. 5, lines 25–29. The server stores
the addresses in a database and timestamps them, id.,
col. 5, lines 29–31, thus “establish[ing]” the unit as “an
active on-line party available for communication using the
disclosed point-to-point Internet protocol,” id., col. 5, lines
32–34; see id., col. 5, lines 35–38 (same for a second unit).
To reduce the staleness of the status information, the
server “may use the timestamps to update the status of
each processing unit; for example, after 2 hours, so that
the on-line status information stored in the database 34 is
relatively current.” Id., col. 5, lines 39–44. Another,
seemingly even better means of keeping the database
information accurate about true on-line status is this:
When a user logs off or goes off-line from the In-
ternet 24, the connection server 26 updates the
status of the user in the database 34; for example,
by removing the user’s information, or by flagging
the user as being off-line. The connection server
26 may be instructed to update the user’s infor-
mation in the database 34 by an off-line message,
such as a data packet, sent automatically from the
4 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
processing unit of the user prior to being discon-
nected from the connection server 26. According-
ly, an off-line user is effectively disabled from
making and/or receiving point-to-point Internet
communications.
Id., col. 6, lines 6–16.
When a first unit seeks to set up a point-to-point
communication link with a second unit, it “sends a query,
including the E-mail address of the callee, to the connec-
tion server 26,” which “searches the database 34 to de-
termine whether the callee is logged-in by finding any
stored information corresponding to the callee’s E-mail
address indicating that the callee is active and on-line.”
Id., col. 5, lines 55–60. “If the callee is active and on-line,
the connection server 26 then performs the primary point-
to-point Internet protocol; i.e., the IP address of the callee
is retrieved from the database 34 and sent to the first
processing unit 12.” Id., col. 5, lines 60–64. The protocol
does not include the actual establishing of the point-to-
point communication, but once the IP address is sent to
the first unit, the first unit “may then directly establish”
communication with the callee using the latter’s IP ad-
dress. Id., col. 5, lines 64–67. And: “If the callee is not on-
line when the connection server 26 determines the callee’s
status, the connection server 26 sends an OFF-LINE
signal or message to the first processing unit 12.” Id., col.
6, lines 1–4.
The specification then describes the “secondary point-
to-point Internet protocol,” which involves the sending of
messages to an email server—either as a supplement to or
independently of the “primary” protocol using the connec-
tion server. See, e.g., id. at col. 6, line 17, to col. 7, line 31.
And it states that, using the described protocols, real-time
point-to-point audio, video, and voice communication can
“be established and supported without requiring perma-
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 5
nent IP addresses to be assigned to either” the caller or
callee. Id., col. 7, lines 32–36.
Claim 1 of the ’704 patent is representative of the as-
serted claims:
1. A computer program product for use with a
computer system, the computer system executing
a first process and operatively connectable to a
second process and a server over a computer net-
work, the computer program product comprising:
a computer usable medium having program
code embodied in the medium, the program
code comprising:
program code for transmitting to the server a
network protocol address received by the
first process following connection to the
computer network;
program code for transmitting, to the server,
a query as to whether the second process is
connected to computer network;
program code for receiving a network protocol
address of the second process from the serv-
er, when the second process is connected to
the computer network; and
program code, responsive to the network pro-
tocol address of the second process, for es-
tablishing a point-to-point communication
link between the first process and the sec-
ond process over the computer network.
’704 patent, col. 11, lines 2–22 (emphasis added to high-
light the key claim phrase at issue).
In its petition for inter partes review of the ’704 pa-
tent under 35 U.S.C. § 312, Sipnet requested cancellation
of claims 1–7 and 32–42 as anticipated by and obvious
6 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
over several prior-art references, most significantly “Net-
BIOS” and “WINS.” The Board, under authority delegat-
ed by the Director of the Patent and Trademark Office,
instituted inter partes review under § 314. The Board
then conducted the review pursuant to § 316 and reached
a final decision cancelling the challenged claims under
§ 318. Sipnet, supra.
Of central importance on appeal, the Board adopted
Sipnet’s proposed construction of the claim language
highlighted above. Although the parties agreed that the
language requires “being on-line,” they disagreed about
whether, as Straight Path contended, the language refers
to a present-tense status, J.A. 299–302, 305–10, or
whether, as Sipnet contended, it “simply requires being
registered with the server.” Sipnet, 2014 WL 5144564, at
*3. The Board adopted Sipnet’s view as the broadest
reasonable construction based on the specification: “ ‘con-
nected to the computer network’ encompasses a pro-
cessing unit that is ‘active and on-line at registration.’ ”
Id. at *4. As is not disputed here, what the Board meant
was that, to come within the query claim language, all the
query from the first unit need do is request whatever the
connection server has listed about a second unit’s on-line
status, even if the listed information is not accurate at the
time of the query, i.e., even if it lists the second unit as
online when, at that time, it is in fact not online.
Based on that construction, the Board concluded that
claims 1–7, 32, and 38–42 were anticipated by NetBIOS,
claims 1–7 and 32–42 were anticipated by WINS, and
claims 33–37 were invalid for obviousness over NetBIOS
and WINS. Id. at *8–15. Straight Path appeals under 35
U.S.C. §§ 141, 319, challenging the claim construction just
described and also presenting an argument about the
term “process” in the claims. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 7
DISCUSSION
A
There being no dispute here about findings or evi-
dence of facts extrinsic to the patent, whether facts about
outside-the-patent understandings of technical words or
other facts, we conduct a de novo review of the Board’s
determination of the broadest reasonable interpretation of
the claim language. See In re Cuozzo Speed Technologies,
LLC, 793 F.3d 1268, 1279–80 (Fed. Cir. 2015); Microsoft
Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297 (Fed. Cir.
2015). Straight Path notes that the patent has now
expired and on that basis asks us to determine the gov-
erning construction under the principles of Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc),
because the Board applies Phillips, rather than the
broadest-reasonable-interpretation standard, for expired
patents. See In re Rambus, Inc., 753 F.3d 1253, 1256
(Fed. Cir. 2014). We need not explore the issues raised by
that request, however, because we conclude that the
Board adopted a claim construction that is erroneous even
under the broadest-reasonable-interpretation standard.
We start with the claim language—which has a mean-
ing that can only be called plain. The present tense “is” in
“is connected to the computer network” plainly says that
the query transmitted to the server seeks to determine
whether the second unit is connected at that time, i.e.,
connected at the time that the query is sent. The ques-
tion asked by the query is whether the device “is” con-
nected, not whether it was connected or whether it is still
registered as being connected even if that registration
information is no longer accurate. It is not a reasonable
interpretation of the claim language, considering its plain
meaning, to say that it is satisfied by a query that asks
only for registration information, regardless of its current
accuracy.
8 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
The Board said nothing that either recognizes or dis-
putes the plain present-tense meaning of the claim lan-
guage on its face. Indeed, the Board’s construction—
“active and on-line at registration,” Sipnet, 2014 WL
5144564, at *4 (emphasis added)—implicitly recognizes
that being online is a status that can change over time:
having the status “at registration” is having it at a partic-
ular time. The query required by the claim language asks
if the callee “is” online, which is a question about the
status at the time of the query. But the Board did not
address the facially clear meaning, instead turning im-
mediately to the specification.
Sipnet does much the same thing. Sipnet repeatedly
recognizes and stresses the difference between “past
online status” and “current online status,” the latter being
“opposed to the past status at registration.” Sipnet Br. at
21 (emphases in original); see id. at 8–9. Yet Sipnet offers
no argument that, as a matter of plain meaning, the claim
language “is” calls for anything but present-status infor-
mation. Nor does it point to anything in other claim
language that contradicts that plain meaning. Like the
Board, Sipnet relies entirely on the specification.
When claim language has as plain a meaning on an
issue as the language does here, leaving no genuine
uncertainties on interpretive questions relevant to the
case, it is particularly difficult to conclude that the speci-
fication reasonably supports a different meaning. The
specification plays a more limited role than in the com-
mon situation where claim terms are uncertain in mean-
ing in relevant respects. The reason is that, unless there
is a disclaimer or redefinition, whether explicit or implicit,
the proper construction of any claim language must,
among other things, “stay[] true to the claim language,”
and, in order to avoid giving invention-defining effect to
specification language included for other descriptive and
enablement purposes, “the court’s focus remains on un-
derstanding how a person of ordinary skill in the art
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 9
would understand the claim terms.” Phillips, 415 F.3d at
1316, 1323, 1324 (internal quotation marks omitted); id.
at 1321. Reflecting the distinct but related roles of the
claims and specification, the governing approach to claim
construction thus maintains claim language’s key (not
always decisive) role in claim construction: it stresses the
importance of the specification in identifying and resolv-
ing genuine uncertainties about claim language, and in
stating redefinitions or disavowals, id. at 1315–17, while
it rejects a sequenced, dictionary-driven, burden-shifting
approach to claim construction, id. at 1320–24. Under
our Phillips approach, the plainness of the claim language
necessarily affects what ultimate conclusions about claim
construction can properly be drawn based on the specifi-
cation. For that reason, the court has repeatedly stated
since Phillips that redefinition or disavowal is required
where claim language is plain, lacking a range of possible
ordinary meanings in context. See Pacing Technologies,
LLC v. Garmin Int’l, Inc., 778 F.3d 1021, 1024 (Fed. Cir.
2015) (citing authorities).
Here, the specification does not provide a basis for
reasonably adopting a construction that contradicts the
plain meaning of the claim language. The Board relied on
just one passage from the specification—which says that
“a second user operating the second processing unit, upon
connection to the Internet through a connection service
provider, is processed by the connection server to be
established in the database as an active on-line party.”
’704 patent, col. 5, lines 34–38 (emphasis added); see id.,
col. 5, lines 31–34 (similarly as to the first unit: registra-
tion establishes it “as an active on-line party available for
communication” using the disclosed protocol). But that
passage says no more than that the unit is active and
online—available for communication—at the time it
registers. It does not expressly or implicitly redefine “is
connected” to mean “is still registered, once was connect-
ed, and may or may not still be connected,” and it does not
10 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
otherwise establish that being active and online at the
time of registration means, even if contrary to fact, being
active and online when a caller’s query for a callee’s
status comes in. 1
Indeed, the immediately following passage recognizes
the temporal nature of the status of actually being online.
The specification says that the connection server “may use
the timestamps to update the status of each processing
unit” over time to try to keep the “on-line status infor-
mation stored in the database 34 relatively current.” Id.,
col. 5, lines 39–42. Whether that passage refers to “regis-
tration time-outs,” Sipnet Br. at 23, or to “actively
check[ing] whether a process is still connected to the
network,” J.A. 296 (Patent Owner’s Response), the pas-
sage clearly presupposes that the database listing of a
unit as an active online party can become false over time.
Contrary to the Board’s construction, the specification
thus distinguishes, rather than equates, being online and
being (or having been) registered.
The Board did not rely on any other basis for its con-
struction, and Sipnet does not meaningfully do so in this
court. Two additional passages from the specification are
nevertheless worth noting. They confirm that there is no
basis for departing from the plain meaning of the claim
language.
1 At oral argument, the following exchange occurred
with Sipnet’s counsel: “THE COURT: It describes, of
course, a connection server that makes a database. When
somebody registers, that registration means, right then
and there, they’re active and online. A: Correct. THE
COURT: But then that doesn’t tell you what the answer
is to the question asked a day later, ‘Are you active and
online?’ That could be out of date. A: That’s right.” Oral
Argument at 21:19–21:43 (discussing ’704 patent, col. 5).
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 11
The specification says that, when a first unit sends a
query to the connection server, the latter “searches the
database to determine whether the callee is logged-in by
finding any stored information corresponding to the
callee’s E-mail address indicating that the callee is active
and on-line.” ’704 patent, col. 5, lines 57–60. That lan-
guage merely describes checking the database for stored
information. It does not state that whatever information
is stored, no matter how the connection server operates,
establishes whether the callee is active and online.
Moreover, the specification immediately continues
with a description of how a connection server might work
so as to shrink if not completely eliminate any gap be-
tween recorded status and true status: “[w]hen a user logs
off or goes off-line from the Internet, the connection server
26 updates the status of the user in the database; for
example, by removing the user’s information, or by flag-
ging the user as being off-line.” Id., col. 6, lines 6–9; see
id., col. 6, lines 10–14 (the “server 26 may be instructed to
update the user’s information in the database by an off-
line message . . . sent automatically from the processing
unit of the user prior to being disconnected from the
connection server”). At oral argument, Sipnet’s counsel
seemed to agree that the passage describes what must be
“happening if the connection server answer is going to do
what the claim language requires, supply an answer to
the query whether the second process is connected to the
computer network.” Oral Argument at 24:10–25:03. The
specification’s indication of how a particular server pro-
cess can provide accurate information undermines the
notion that the specification generally redefines “is con-
nected” to include active and online at registration, even if
not at the time of the query.
The plain meaning of the claim language is therefore
not overridden by the specification. And the plain mean-
ing is positively confirmed by the prosecution history,
which we have indicated is to be consulted even in deter-
12 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
mining a claim’s broadest reasonable interpretation. See
Proxyconn, 789 F.3d at 1298. In distinguishing claims 1–
7 and 32–42 over NetBIOS and its “active name” disclo-
sure to overcome a rejection during reexamination, the
assignee of the ’704 patent made the very distinction that
is at issue here—between still being registered and actu-
ally being online:
“[A]n active name” is not synonymous with an “on-
line status with respect to the computer network.”
An active name simply refers to a name that has
been registered and that has not yet been de-
registered, independent of whether the associated
computer is or is not on-line. . . . NetBIOS does
not teach that an active name in NetBIOS is syn-
onymous with “whether the second process is con-
nected to the computer network.” An active name
simply refers to a name that has been registered
and that has not yet been de-registered, inde-
pendent of whether the associated computer is or
is not connected to the computer network.
Reply to Office Action of August 27, 2009, reexamination
of ’704 patent, control no. 90/010,416 (dated Nov. 27,
2009) at 11, 14–15. After the assignee made that distinc-
tion, the examiner withdrew the rejection and confirmed
the claims.
One final point about this claim-construction issue:
Sipnet suggests in various ways that the specification
does not adequately describe or enable the systems or
processes involving a query about current connection
status under Straight Path’s claim construction. But
written-description and enablement challenges were not,
and could not have been, part of the inter partes review
that is now before us. See 35 U.S.C. § 311(b) (limiting
challenges to prior-art challenges). Such challenges
involve bottom-line or subsidiary factual issues that have
not been litigated or adjudicated. Accordingly, Sipnet’s
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 13
arguments about insufficient specification support for the
claims if they are given their plain meaning, arguments
not adopted by the Board, do not alter our conclusion
about claim construction. We offer no view on the merits
of Sipnet’s suggestion of written-description or enable-
ment problems.
For the foregoing reasons, “is connected to the com-
puter network” in the ’704 patent’s claims—and the
counterpart claim phrases that the parties agree bear the
same meaning—can only reasonably be understood to
mean “is connected to the computer network at the time
that the query is transmitted to the server.” The Board
did not apply this claim construction in considering the
prior art, including NetBIOS and WINS. It should do so
on remand.
B
Straight Path’s second challenge to the Board’s deci-
sion rests on the contention that the Board failed to
construe “process.” We hold that Straight Path did not
preserve that contention. It did not request a construc-
tion of “process” in its preliminary response to Sipnet’s
petition to institute inter partes review, in its response
after the Board instituted the review, or at the oral hear-
ing before the Board. In particular, Straight Path never
argued for a construction of “process” under which a
process being connected meant something other than its
host device being connected. Nor did Sipnet. The Board
thus committed no error in not construing “process.”
Because Straight Path’s “process”-based challenge de-
pends entirely on its newly proposed construction, which
it failed to preserve before the Board, this court does not
address the challenge.
14 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
CONCLUSION
We reverse the Board’s cancellation of claims 1–7 and
32–42 of the ’704 patent, and we remand for further
proceedings consistent with this opinion.
REVERSED AND REMANDED
United States Court of Appeals
for the Federal Circuit
______________________
STRAIGHT PATH IP GROUP, INC.,
Appellant
v.
SIPNET EU S.R.O.,
Appellee
______________________
2015-1212
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2013-
00246.
______________________
DYK, Circuit Judge, concurring-in-part, dissenting-in-
part.
I respectfully dissent from the majority’s claim con-
struction of the term “is connected to the computer net-
work” to require absolute currency in a real-time
assessment of connectivity. The majority’s insistence that
“is” requires absolute currency fails to take account of a
common usage of the term “is” and our prior decision in
Paragon Solutions, LLC v. Timex Corp., holding that a
reference to “real-time” does not necessarily require
absolute currency. 566 F.3d 1075, 1088 (Fed. Cir. 2009).
More importantly, the majority fails to give sufficient
2 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
weight to the specification which Phillips v. AWH Corp.
holds “is always highly relevant to the claim construction
analysis” and is “the single best guide to the meaning of a
disputed term.” 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en
banc) (internal quotations and citations omitted) (empha-
sis added). 1
I
The patent here claims a system, an apparatus, and
associated methods to facilitate real time communication
between two users over the internet. When a user logs
onto the internet, he is assigned a dynamic IP address
(akin to a phone number for a computer). Because this IP
address may be different every time the user logs on,
direct communication is nearly impossible, just as making
a phone call to someone would be if phone numbers
changed on every call. The present invention purportedly
solves this problem by maintaining a database of IP
addresses in a central server. As the specification de-
scribes, when a user logs onto the network, his computer
sends a current IP address and an email address to a
central server. ’704 patent, col. 5, lines 25–29. When
1 The Board applied the broadest reasonable inter-
pretation standard (“BRI”) rather than Phillips. Normal-
ly, BRI applies in inter partes review, see In re Cuozzo
Speed Techs., LLC, 793 F.3d 1268, 1279 (Fed. Cir. 2015),
but given that the patent expired on September 25, 2015,
during the pendency of this appeal, the patentee contends
that the Phillips standard should apply. The majority
does not decide this issue because it contends that even
under BRI, the Board’s construction was incorrect. In my
view, the majority’s construction is incorrect even under
Phillips, and, like the majority, I see no significant differ-
ence between the Phillips and BRI standards as applied
here.
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 3
another user wishes to initiate real-time communication
with the first user (for example, a video telephone call),
his computer will query the server with the first user’s
email address. Id. at col. 5, lines 55–60. If the database
indicates that the first user is online, the server will send
the second user the IP address of the first user, enabling
the second user to initiate direct real-time communication
with the first user. Id. at col. 5, lines 60–64. All parties
agree that discovering whether a user “is connected to the
network” involves a check of the server’s database.
II
The present claim construction dispute arises in the
context of an inter partes review in which the Patent
Trial and Appeal Board (“the Board”) found the claims of
the patent anticipated and/or obvious over two pieces of
prior art that disclosed similar server-based databases of
IP addresses. The patentee contends that these prior art
disclosures do not read on the patent claims because the
claims here require a real-time check, which is not dis-
closed by the prior art. Relying on the specification,
which indicates that the database only need be “relatively
current,” ’704 patent, col. 5, lines 39–42, the Board reject-
ed this construction. On appeal, the entire anticipa-
tion/obviousness question now depends on the
construction of the term “is connected to the network.”
The majority rejects the Board’s specification-based
construction, holding that the word “is” necessarily de-
notes currency and cannot accommodate a situation in
which information is even slightly out of date. The major-
ity states that “the present tense ‘is’ in ‘is connected to the
computer network’ plainly says that the query transmit-
ted to the server seeks to determine whether the second
unit is connected at that time, i.e., connected at the time
that the query is sent.” Maj. Op. at 7. “When claim
language has as plain a meaning on an issue as the
4 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
language [in this claim] does, . . . [t]he specification plays
a more limited role than in the common situation where
claim terms are uncertain in meaning in relevant re-
spects.” Id. at 8. The majority then concludes that “the
specification does not provide a basis for reasonably
adopting a construction that contradicts the plain mean-
ing of the claim language.” Id. at 8. According to the
majority, the Board’s construction was erroneous because
it “did not address the facially clear meaning, instead
turning immediately to the specification.” Id. at 8. In
other words, the majority relies on the meaning it assigns
to claim language based on its own knowledge of word
usage rather than relying on the patentee’s own specifica-
tion.
III
Contrary to the majority’s assertion, ordinary usage
easily accommodates the Board’s interpretation of “is
connected.” If a person says that “John is at home,” this
might lead to the question: “How do you know?” The
response “I spoke to him five minutes ago” would not be
viewed as contradicting the original statement, even
though John might have left home in the intervening five
minutes. In other words, the use of the word “is” does not
necessarily imply absolute accuracy or absolute currency.
In any event, under the Phillips approach, we must
look to the specification as the “single best guide to the
meaning of a disputed term.” Phillips, 415 F.3d at 1315.
This is true, contrary to the majority’s assertion, even in
cases where language, on its face, appears to have a plain
meaning, because, as Phillips states, the specification “is
always highly relevant to the claim construction analy-
sis.” Id. (emphasis added). The only meaning that mat-
ters is the meaning in the context of the patent. See id. at
1316 (citing to and quoting Netword, LLC v. Centraal
Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001) (“The claims
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 5
are directed to the invention that is described in the
specification; they do not have meaning removed from the
context from which they arose.”))
In other cases, we have appropriately paid primary
attention to the specification, including a case involving a
nearly identical situation, Paragon Solutions. 566 F.3d at
1088. The majority’s insistence that “is” requires curren-
cy independent of the specification is directly contrary to
this prior decision, which faithfully followed Phillips. We
held that “displaying real-time data” “cannot mean in-
stantaneous” based on a reading of the claim language in
the context of the specification. Paragon Solutions, 566
F.3d at 1088. This case involved an exercise monitoring
system (which can be worn on the wrist) that displays
data to the user from both an “electronic positioning
device” and from a “physiological monitor.” Id. at 1083.
Despite seemingly similar clarity in the language of the
claim—“a display unit configured for displaying real-time
data”—we recognized that claim language cannot be read
in isolation and looked to the specification in determining
the ordinary meaning of the claim language. Id. at 1088.
Because the claim required data that, according to the
specification, took time to develop, we rejected the district
court’s technical dictionary-based construction and held
that “real-time” did not mean “instantaneous.” See id. at
1092. The majority’s conclusion that “is” necessarily
requires currency here contravenes the holding of Para-
gon Solutions.
The majority’s construction of the term is also contra-
ry to the specification in this case. The specification is
clear that “is connected” does not require a real-time
check. The specification—the “single best guide to the
meaning of a disputed term,” see Phillips, 415 F.3d at
1315—describes that, when a query is received, the server
“searches the database . . . to determine whether the
callee is logged-in by finding any stored information
6 STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O.
corresponding” to that queried user. ’704 patent, col. 5,
lines 57–59 (emphasis added). This information in the
database, as described by the specification, is kept “rela-
tively current.” Id. at col. 5, lines 39–42. Checking his-
torical “relatively current” information in a database is
not a “real time” determination.
The majority’s construction is not only inconsistent
with the general description of the invention, it is also
inconsistent with the described embodiments. At oral
argument, the patentee conceded that its construction,
now adopted by the majority, would require the database
to be always accurate. 2 In the preferred embodiment, a
database record is created when a user logs on to the
network. ’704 patent, col. 5, lines 25–29. Everyone
agrees that checking whether a user “is connected to the
network” involves checking that database record. But
this embodiment includes mechanisms to detect if a user
is no longer on-line that do not guarantee the accuracy of
that record. For example, the server will periodically
(e.g., every 2 hours) update the database, looking to see
whether a record has been updated during that time
period. Id. at lines 39–40. If the record is too old, the
server will change the database record to indicate that the
user is no longer online. See id. This check can be out of
date because of the time between periodic checks. The
embodiment also describes that when a user logs off, that
user’s computer can send a log-off message to the server,
which will then update the database record to indicate
that that particular user is not online. Id. at col. 6, lines
2 At oral argument, the patentee was asked wheth-
er its “view is that the database must always be accurate,
and that’s the difference between [the patented invention]
and the prior art, correct?” The patentee responded,
“That is correct, your honor.” Oral Argument at 34:53.
STRAIGHT PATH IP GROUP, INC. v. SIPNET EU S.R.O. 7
6–16. As the Board found, even this method will not
prevent a non-current response to a query to the database
when, for example, the first user’s computer crashes or
otherwise fails to send a log-off message to the server.
Thus, as the patent itself recognizes, the information in
the database will only be “relatively current,” and there is
no disclosure in the specification that would warrant
construing “is connected” to require absolute accuracy.
I respectfully dissent.