Ad lib comments from the bench

In the oral argument of Telcordia Tech., Inc. v. Cisco Systems, Inc., 2009-1175 (Fed. Cir. 2010), Judge Rader expressed his concern in regard to the district court judge deciding claim construction based on ad lib comments by a Federal Circuit judge during a previous oral argument.  You can listen to Judge Rader’s comments here: [Listen].

The following section from the opinion explains the ad lib comment further and how it was utilized by the district court:

The empty payload fields are “empty” of data packets and therefore have non-source bit signals only. The specification explains that “a train of DTDM frames with empty payload fields . . . has a bit rate which defines a basic backbone transmission rate for the DTDM system.” ’306 patent col.7 ll.27-30. Therefore, the bit signals help the DTDM system maintain a bit stream even when it is not transmitting data from an information source. The specification does not specify where in the frame the “bit rate” is stored nor does it specify the type of non-source bits used to maintain the bit rate. Therefore, nothing in the ’306 patent restricts the bit signals in the empty payload field to ones that serve no purpose other than place-holding.


The district court apparently took the explanatory phrase from an ad lib comment made during an oral hearing at the Federal Circuit. In Bell Communications Research, Inc. v. FORE Systems, Inc., Nos. 02-1083, 02-1084, 2003 WL 1720080 (Fed. Cir. Mar. 27, 2003), Bell Communications Research, Inc., now known as Telcordia, asserted the ’306 patent against another defendant. This court reviewed a district court’s construction of the term “empty payload field” in the ’306 patent. Id. In that case, the district court had explained that “a frame’s payload has zero data in it.” Id. at *6. During oral hearing, Bell Communications agreed with Circuit Judge Bryson’s characterization of bits in the “empty payload fields” as “garbage:”


Judge Clevenger: Can we come back to the empty payload field? “Empty” seems to me . . . the com-mon meaning of the word “empty” means there is nothing there. So, you are saying that there is something in the written description that tells me what empty means?


Bell Communications’s Counsel: I am saying . . . .


Judge Clevenger: Where in the written descrip-tion?


Bell Communications’ Counsel: A144, column 7, lines 29-35. And, what you will see there at that point . . . .


Judge Clevenger: There is a bit rate.


Bell Communications’s Counsel: It says, “this train.” It is talking about empty payload field. “This train 10 has a bit rate.” In other words, it’s empty, but it has a bit rate. Because in order to have . . . sometimes there won’t be a packet ready. The stream must continue. There must be a bit in the stream. It just won’t be a data bit, it won’t be a source data bit. It will be a bit. And it will have information in it, but it won’t be source informa-tion.


Judge Bryson: It would just be garbage, I take it. I mean it will just be 1’s and 0’s that have no rela-tionship to the stream of any information that’s coming in from the source.


Bell Communications’s Counsel: Exactly, Your Honor.


The issue on appeal, at least initially, seemed to be whether the district court actually meant “no bit signals of any kind” when it said “zero data.” Id. At oral hearing, however, Fore Systems, Inc. stated its understanding that “‘zero data’ encompasse[d] various bit signals that might maintain the stated transmission rate of a bit stream, including ‘placeholders’ or ‘garbage bits.’” Bell Commc’ns, 2003 WL 1720080, at *6. Because the parties’ agreement on this broader interpretation of “zero data” rendered the claim construction issue moot, this court declined to refine the district court’s construction. Id.


The claim construction issue on appeal in the present case—whether the empty payload field only has bits that act as placeholders—is different from the one in Bell Communications—whether the empty payload field has any bits at all. Circuit Judge Bryson’s comments, there-fore, are not directly relevant to the specific issue in the present case. The district court erred by limiting the claim scope based on the ad lib comment from the bench.


The Federal Circuit is not shy in using in its opinions admissions by counsel that were made during oral argument.  The court has done so perhaps with increasing frequency since recordings of the oral arguments were first made available on the CAFC website.

You can read the entire opinion here: [Read].

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

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