"The Present Invention" does not Automatically Limit Claims in All Cases, But it Did Here

Netcraft Corporation v. Ebay, Inc., [2008-1263] (December 9, 2008) [PROST, Bryson, Linn] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent Nos. 6,351,739 and 6,976,008.
DISCUSSION: The Federal Circuit agreed with the district court that “providing a communications link through equipment of the third party,” required “providing customers with internet access.” Because the parties agreed that Defendants do not provide internet access to customers, summary judgment was appropriate.
The Federal Circuit conceded that the lay meaning of “communications link” standing alone may be broader than “internet access,” but said it was not construing this term standing alone. The Federal Circuit instructed that in order to properly determine the ordinary meaning of the entire phrase at issue in this case, it must consider the claim terms in light of the entire patent. The Federal Circuit found that based on a reading of the common specification in its entirety, along with the cited prosecution history, the claim limitation “providing a communications link through equipment of the third party” requires providing customers with internet access.
The Federal Circuit noted the repeated identification of “the present invention” in the Summary of the Invention as requiring internet communication. The Federal Circuit said that use of the phrase “the invention” does not “automatically” limit the meaning of claim terms in all circumstances, stating that such language must be read in the context of the entire specification and prosecution history. However the Federal Circuit found that under the circumstances the claims were limited. The Federal Circuit even found support in the Abstract. The Federal Circuit attached less significance to the prosecution history, noting that because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.