Modifiers in the Claims Narrow Them

Furnace Brook LLC v. Overstock.com, Inc., [07-1064](May 23, 2007)[BRYSON, Mayer, Clevenger] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 5,721,832.
SIGNIFICANCE: Adjectives in claims have meanings that cannot be ignored, and may distinguish broader disclosures in the specification. Generic disclosures do not support §112, ¶6 limitations.
BRIEF: At issue was whether personal computer and cell phones were “telephone terminals” within the meaning of the claims. In light of the specification, the Federal Circuit found that a telephone terminal required a dial-up connection to a catalog server. The Federal Circuit noted that while these devices were capable of performing the function of a telephone terminal, they must actually be performing that function in order to be “telephone terminals” as that term is used in the claims. The Federal Circuit rejected the argument that because the specification discloses a terminal that communicates like a computer or cell phone, computers and cell phones literally infringe the claim. The Federal Circuit pointed out that the claim term was telephone terminal, not terminal, and “[t]he “modifier ‘telephone’ must add some limitation to the noun ‘terminal’ for the modifier to have any meaning.” The Federal Circuit also found that the patentee simply failed to provide adequate proof of infringement under the doctrine of equivalents. Another claim at issue claimed “customer terminal means” instead of “telephone terminal” The Federal Circuit agreed with the district court that this was a §112, ¶6 limitation, and that the structure disclosed in the specification was a standard land line telephone and a touch tone telephone connected to a television. The Federal Circuit rejected the argument that an “online interactive communications network” was also a disclosed structure because it “identified no specific structure for performing the claimed function, ; it describes only a generic class of structures and was thus properly ignored. Regarding equivalents to the structures disclosed, the Federal Circuit again found the patentee’s proof of equivalent lacking.