When should a “whereby clause” be treated as a claim limitation?

The Federal Circuit quietly issued a Rule 36 opinion in Finisar v. DirecTV, 2009-1410 (Fed. Cir. Jan. 8, 2010) earlier this month. This was the second time that the Federal Circuit has addressed this dispute. In an earlier opinion, the court reversed the claim construction of a vital claim term, vacated a $78.9M jury verdict, and remanded the case back to the district court in the Eastern District of Texas. Upon remand, the district court subsequently found the remaining claims at issue invalid on summary judgment in view of the new claim construction.

An important issue on remand was the construction of a “whereby clause.” For example, claim 39 of the 5,404,505 patent reads:

39. An information transmission method comprising the steps of:

storing an information database on one or more memory devices;

generating and storing on said memory devices a set of indices for referencing data in said information database, including distinct indices for referencing distinct portions thereof, and embedding said indices in said information database;

scheduling transmission of selected portions of said information database, including assigning each selected portion of said information database a transmission repetition rate and one or more scheduled transmission times in accordance with said assigned repetition rate;

transmitting a stream of data packets containing said selected portions of said information database in accordance with said scheduled transmission times;

receiving said transmitted stream of data packets at subscriber stations;

at each subscriber station, storing filter data corresponding to a subset of said indices, said filter data specifying a set of requested data packets which comprises a subset of said transmitted data packets; and

at each subscriber station, downloading into a memory storage device those of said received data packets which match said specified set of requested data packets;

wherein said generating step generates indices including timestamps therein, said timestamps indicating when each said portion of the information database referenced by an index is to be transmitted;

said method including decoding said timestamps in said indices at said subscriber stations;

whereby subscribers can be informed as to when a specified portion of the information database will be received.

Surprisingly, with both Judges Rader and Moore on the panel, the panel passed up a golden opportunity to wade in on the issue of what test should be used when assessing whether a “whereby clause” is a claim limitation.  Instead, the panel simply issued a Rule 36 opinion without any detailed discussion. Presumably, the panel felt that regardless of whether the whereby clause was considered a limitation, the prior art clearly invalidated the claims.

Nevertheless, the recording of the oral argument concerning the whereby clause issues is very interesting.  Among other things, counsel for the plaintiff-appellant appeared to argue that the whereby clause was not simply an inherent result that necessarily followed from the preceding claim elements. Rather, purportedly the whereby clause addressed when data will be received. This distinguished the whereby clause as specifying when data “will be received” as opposed to when data “is being received” or when data “was received.”  Thus, appellant’s counsel argued that the whereby clause actually added a further claim element that could not be inherent from the earlier claim elements, as it specified one of three possible options. [Listen]

Counsel for the appellee-defendant first countered that a “whereby clause” should be treated similar to a claim preamble and that claim preambles and whereby clauses are just bookends to a claim that state an intended result.  Judge Moore then asked whether there should be a presumption that claim language that appears in the body of the claim should be considered a claim limitation.  Appellee’s counsel then discussed the court’s two opinions on whereby clauses from the last decade Hoffer v. Microsoft, 405 F.3d 1326 (Fed. Cir. 2005) and Minton v. National Assn of Securities Dealers, Inc., 336 F.3d 1373 (Fed. Cir. 2003).  [Listen]

Counsel for the appellant would later argue during rebuttal that the Hoffer case is in conflict with prior court precedent — which again begs the question of why this panel passed up an opportunity to wade in on the issue.

You can listen to the entire oral argument here: [Listen].

You can find the court’s opinion here: [Read]

*Like many oral arguments, this oral argument comprised a number of strong-minded individuals who spent a good deal of time talking on top of one another. If you’re like me in those situations, you may find yourself having flashbacks to the scene from “Cool Hand Luke” where the work camp warden says “What we’ve got here, is failure to communicate.”

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