Statements Made By Inventor During Prosecution History Are Binding, Regardless Of Whether Examiner Relied On Them

In Fenner Investments, Ltd. v. Cellco Partnership, No. 13-1640 (Fed. Cir. Feb. 12, 2015), the Federal Circuit affirmed the district court's grant of SJ that Cellco Partnership, doing business as Verizon Wireless ("Verizon"), did not infringe claim 1 of U.S. Patent No. 5,561,706 ("the '706 patent").

The '706 patent is directed to personal communication services ("PCS") systems, whereby users are able to access a communications network from various locations. In PCS systems, each user has a personal identification number by which call servicing and billing are identified with the user. Claim 1 of the '706 patent recites, among other things, "receiving at a radio frequency communication switch a personal identification number from a mobile user." After a claim construction hearing, the district court adopted Verizon's proposed construction of "personal identification number," construing the term to mean "a number separate from a billing code (as construed herein), identifying an individual system user, which is associated with the individual and not the device." Slip op. at 3-4. Based on this construction, the parties stipulated to final judgment of noninfringement. Fenner Investments, Ltd. ("Fenner") appealed.

"T]he interested public has the right to rely on the inventor's statements made during prosecution, without attempting to decipher whether the examiner relied on them, or how much weight they were given." Slip op. at 9 (citing Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004)).

The Federal Circuit explained that the "terms used in patent claims are not construed in the abstract, but in the context in which the term was presented and used by the patentee, as it would have been understood by a person of ordinary skill in the field of the invention on reading the patent documents." Id. at 4-5 (citing Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013)). The Court further explained that "a claim receives the meaning it would have to persons in the field of the invention, when read and understood in light of the entire specification and prosecution history." Id. at 5 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc)). As such, "[a]ny explanation, elaboration, or qualification presented by the inventor during patent examination is relevant." Id. (citing Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011)).

The Federal...