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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Monday
Apr302012

Federal Circuit Looks to Related Application in Construing Claim Terms

ZapMedia Services, Inc. v. Apple, Inc. (Fed. Cir. Apr. 25, 2012) (nonprecedential)

In this case, the Federal Circuit affirmed the district court's construction on numerous terms regarding a patent relating to a system and method for distributing media asserts to user devices and managing user rights of the media assets.

Based on statements made during prosecution and claim language regarding giving "authorized" devices "access" to media assets, the district court found that all of the asserted claims required that access to the media assets be limited to only those media players specified in the user account.  The plaintiff argued on appeal that the district court erroneously construed a negative "exclusivity" limitation into the claims and that the claims, directed to a method of managing access to a plurality of media assets, should not be limited such that methods that also grant access to unauthorized devices would not infringe.

The Federal Circuit agreed with the district court that "in light of the claim language, written description, and the prosecution history, the authorizing limitations limit 'access' to media assets only to 'authorized' media play devices by way of the user account." 

Looking first to the claim language, the Federal Circuit determined that as "the claims require access to media assets by an authorized media player device, logically an unauthorized media player device cannot access the media asserts.   The authorization would be superfluous if unauthorized devices had the same access functionality as authorized devices."

Looking next to the specification, the Federal Circuit cited to three portions of the specification that indicated "authorized devices have access; unauthorized devices do not."

The Court next looked to the prosecution history, where the applicants distinguished a prior art refernece on the issue of authorized versus unauthorized devices.

Finally, the Court also considered statements made during prosecution of the parent application to the patent in suit.

While the Plaintiff argued in response that the prosecution history expressly stated that the patent in suit did not preclude using the technology of the prior art reference at issue, the Federal Circuit determined that the specific technology shared between the prior art reference and the patent in suit was irrelevant to the language construed by the district court.