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GPNE v. Apple: Shot in the Foot By Your Own Specification

The Federal Circuit recently decided GPNE Corp. v. Apple Inc. in favor of Apple, affirming the decision of the district court that certain Apple products did not infringe GPNE's patent US 7,570,954.  GPNE, page 2.  The claims of the '954 patent are generally directed to a "node" for sending and receiving messages.  Id.  GPNE appealed the decision of the district court, alleging that the district court's construction of the term "node" as a "pager with two-way data communications capability that transmits wireless data communications on a paging system that operates independently from a telephone network" was improperly narrow.  Page 6.

Absent further facts, one might be initially disturbed that the district court would take it upon themselves to construe the term "node" so narrowly.  In particular, one might have the view that if GPNE had intended to specifically claim such a pager, they could have explicitly written the term "pager" into their claims.  Indeed, other patents of the same family did just that, thereby implying that something other than a mere pager was intended to be claimed by the '954 patent.  Page 7.  While GPNE's specification only used the term "node" in the Abstract, Title, and Claims (and instead uses the term "pager" over 200 times throughout the specification), claims are supposed to be construed according to how one of ordinary skill in the art would understand them in view of the specification.  Pages 7-8.  It stands to reason that one of ordinary skill in the art understands the difference between the more general concept of a network-based node and the more specific pager embodiment used by the Court.  This is likely true even if the specification discusses pager-based embodiments at length and only sparingly refers to a node as a more general embodiment of the overall invention.  Simply using one type of device as a representative embodiment for explaining the more general invention would not likely justify the Court's construction of a "node" this narrowly.

Instead, it is a single line in the specification of GPNE's patent that makes the Court's narrow construction of a "node" unsurprising.  Towards the end of GPNE's specification, the '954 patent apparently summarizes the overall specification, stating "[t]hus, the invention provides a two-way paging system which operates independently from a telephone system for wireless data communication bewteen users."  Col. 14 lines 14-16 (emphasis added).  In my view, this sentence is the critical fact in this case.  The patent does not say that particular embodiments of the invention provide such a system.  Rather, GPNE clearly states that "the invention" GPNE has applied for provides a two-way paging system and operates independently from a telephone system.  Therefore, it logically follows that if the allegedly infringing device does not provide a two-way paging system which operates independently from a telephone system, the allegedly infringing device is not operating according to GPNE's invention.  Consistent with this logic, the Federal Circuit affirmed the district court's narrow construction of the term "node" as requiring these paging-specific features.  GPNE pages 8-9.

This case underscores the importance of carefully drafting the specification.  Yes, an ordinarily-skilled engineer would likely understand that other forms of computing devices would be just as suitable for implementing various embodiments of GPNE's invention.  However, a Court can, and often does, take blanket statements about "the invention" as a disclaimer of all other embodiments (i.e., a disclaimer of embodiments that are outside such blanket statements).  Unfortunately, the potential for such statements to narrow the scope of otherwise seemingly broad claims is not always easily discerned from a quick reading of a patent.  Indeed, a single sentence buried at the end of the specification can decimate the value of your patent, in some cases.

Will Pagán is an award-winning patent attorney and engineer, nationally-recognized tech-industry veteran, and former IBM Master Inventor.  At Coats + Bennett, he primarily practices patent law with a substantial technical focus on software, computing devices, and telecommunications.  He also assists clients with their trademark, copyright, licensing, and infringement issues.  His bio can be found here.

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