In a January 28, 2014 ruling, Judge Shira A. Scheindlin issued a claim construction ruling in plaintiff Rates Technology Inc.’s patent infringement action against defendant Broadvox Holding Company, LLC and others. While construing 14 claim terms in two patents-in-suit, the Court decided three general threshold issues. First, Judge Scheindlin declined to strike Broadvox’s experts declaration as “conclusory and contradict[ed] by the intrinsic record,” noting that if “I find that a construction proposed by [the expert] contradicts the intrinsic evidence, I will simply discount it.” Second, the Court found that it was not strictly bound by prior rulings about the construction of some of the same terms in earlier litigation, the Court nevertheless found them “persuasive,” and largely followed the reasoning of those decisions. Third, without citing any cases, the plaintiff argued that it was not bound by statements made to the PTO Board of Appeals for purposes of claim construction. Judge Scheindlin rejected that argument, ruling that statements to the PTO Appeals Board “give rise to a prosecution disclaimer where they ‘unequivocally and unambiguously disavow[] a certain meaning . . .’” Many of the disputed terms involved the “means plus function” language under 35 U.S.C. § 112(f). In arguing for a particular construction of one such term that used “means for,” Rates Technology argued that a person of ordinary skill in the art would understand certain language “as connoting sufficient structure” so that the term at issue was actually not a “means plus function” limitation. Judge Scheindlin ruled that it “‘is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function,’” and found it to be a “means plus function” term.
With respect to another “means plus function” claim, Rates Technology argued that Broadvox’s proposed construction limited the claim structure to the same structure as claimed in a dependent claim thus violating the doctrine of claim differentiation. The Court found this argument meritless, ruling that where “a claim term and a dependent claim ‘concern the same function’ and a structure for performing that function is disclosed, ‘a patentee cannot rely on claim differentiation to broaden a means-plus-function limitation beyond those structures specifically disclosed in the specification.’” Judge Scheindlin added that “Section 112(f) requires a court to import ‘the corresponding structure, material, or acts described in the specification.’”
