Argued Differences Must Be Reflected in The Claims

Board of Regents of the University of Texas System v. Benq America Corp., [2007-1388] (July 24, 2008) [PROST, Dyk, Hochberg] The Federal Circuit affirmed summary judgment of non-infringement based on the parties’ stipulation after the district court’s construction of the claim term “syllabic element”.
DISCUSSION: The Board of Regents argued that the construction of “syllabic element” was incorrect, and that the district court improperly ignored its intermittent infringement argument. After reviewing the intrinsic record, the Federal Circuit concluded that the district court correctly construed the term “syllabic element.” The Federal Circuit began with the words of the claims, which by itself, provided little guidance in this case. The Federal Circuit turned to the specification, which repeatedly distinguished between a “word” and a “syllabic element” and indicated that a word is comprised of syllabic elements, confirming the construction that the terms “word” and “syllabic element” are not coextensive in scope.
The Board of Regents argued that because the specification taught that prefixes and suffixes could be syllabic elements, and some well-known suffixes and prefixes include more than one syllable this passage compels a construction that allows syllabic elements to be more than one syllable. The Federal Circuit was not persuaded, observing that just because a “syllabic element” may be a prefix or a suffix does not mean that all prefixes and suffixes are “syllabic elements.” After examining the prosecution history, the Federal Circuit concluded that the proper construction of “syllabic element” is a one-syllable letter group that either comprises a word or can be combined with other one-syllable letter groups to form a word.
The Federal Circuit next turned to the proper construction of the claim phrase “each pre-programmed code being representative of a syllabic element.” The District Court concluded that the accused devices did not rely upon a vocabulary of only syllabic elements, but the Board or Regents disagreed that the asserted claims require the vocabulary to include only syllabic elements. In other words, infringement occurs whenever a match with a syllabic element occurs, even if matches are also made with non-syllabic elements. The Federal Circuit noted that the claims distinguish between “each pre-programmed code” and “the matched one or more pre-programmed codes”, and that these different claim terms are presumed to have different meanings.
The Federal Circuit noted that the Board of Regents argued differences between the claims and the prior art, but these arguments were not reflected in the claims. Thus when the claim was subsequently allowed after the addition of “each” and thus the claims were limited to syllabic elements.
The Federal Circuit affirmed summary judgment of non-infringement.