"At Least One Of" Revisited: Arguing SuperGuide As A Basis For Patent Validity

• Jurisdiction: United States,Federal
• Law Firm: Volpe Koenig
• Subject Matter: Intellectual Property, Patent
• Author: Mr John M. Bollinger and Brandon R. Theiss
• Published date: 04 April 2023

The Federal Circuit's 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent's validity based upon a simple test: does your claim recite "OR" or does your claim recite "AND" when listing a series of elements? SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004). What seems to be a triviality becomes critical under SuperGuide. At issue is how to interpret the plain meaning of the phrase "at least one of" when it precedes a series of elements, such as in the hypothetical claim language, "at least one of A, B, and C."

Since 2004, the SuperGuide principle has been prevalent in patent cases where claim phrases similar to "at least one of" are construed. For example, the U.S. Patent Trial and Appeal Board (PTAB) recently relied on SuperGuide in March 2023 to determine the meaning of "one or more of" as being equivalent to "at least one of" in evaluating the plain meaning of the claim language "one or more of A and B." Ex parte Sharman, 2022-003418 (PTAB Mar. 1, 2023).

In SuperGuide, the Federal Circuit held that the plain meaning of "at least one of A, B, and C" means: at least one A, at least one of B and at least one of C. The Court held that if the applicant intended "at least one of A, B, and C" to mean A, B or C, they should have used "OR."

The Court declined to support plaintiff SuperGuide's construction of the asserted claims of U.S. Patent No. 5,083,211 and concluded that the plain and ordinary meaning of the claims favored defendant DirectTV's narrower interpretation. An exemplary portion of the disputed language of claim 1 of the '211 patent is shown below:

Claim 1: An online television program schedule system comprising:

first means for storing at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type; ...

A key question concerned what the term "at least one of" modifies. Plaintiff SuperGuide asserted that the language broadly requires the selection and storage of one or more of the four criteria listed and does not require storing all four criteria. However, the Federal Circuit noted that DirecTV correctly argued that the phrase "at least one of" modifies each category in the criteria list. Hence, the claim phrase "at least one of A, B, and C" has a narrower meaning: at least one A, at least of B and at least one of C.

Recent Federal Circuit jurisprudence also illustrates the significance of SuperGuide in the semantics of...