Omitting Step in Process Does Not Expand Claim to Cover Use Nothing Like That Described as Integral to Invention
Catch Curve, Inc. v. Venali, Inc. (Fed. Cir. Jan. 22, 2010) (nonprecedential)
In the case the Federal Circuit affirmed the district court's order granting summary judgment of noninfringement of patents relating to the transmission and storage of facsimile messages over switched telephone networks.
The claims at issue on appeal concerned methods for transmitting fax messages over switched telephone networks from an originating fax machine to an "SAFF" (a computer-based device known as a "store and forward facility"), which then stores the message. During claim construction, the district court required that all of the claimed systems and methods use facsimile protocol as the basis for the claimed communications and that the transmissions all be routed over a switched telephone network. In the accused system, an originating fax machine sent a fax message to a point of presence ("POP") over ordinary telephone lines. The fax message was then converted into a TIFF, stored in a queue, encoded into XML, sent via HTTP to a data center, where the message was converted into a PDF or different TIFF file, stored in a user-specific mailbox, then sent by SMTP, HTTP, or HTTPS to the intended recipient. The district court granted summary judgment of noninfringement as the accused process did not exclusively use the facsimile protocol and did not transmit the fax message exclusively using a switched telephone network.
On appeal, the plaintiff argued that the district court erred in limiting the claims to a specific protocol and instead argued that the communications at issue remained fax messages regardless of any subsequent changes in the format used to convey the data after it wa initially sent by a fax machine. Defendant argued that the district court properly limited the claims because the patent specification used the terms "fax machine" and "fax communications" to mean messages communicated in a fax protocol over a switch telephone network, not conversion of messages into different formats for transmission over the internet.
The Federal Circuit found that "[n]othing in the [patent] specification suggests that the fax messages of the invention are converted to a different format and transmitted to the recipient over a medium other than a switched telephone network … [r]ather, the common specification makes clear that the fax messages that are the subject of the patent are sent and received by conventional fax machines or their proxies over a switched telephone network using fax protocol."
Defendant countered by pointing to certain claims at issue relating only to the transmission of fax messages from the originating fax machine to the SAFF and not requiring the further step of transmitting the messages from the SAFF to another SAFF or to the ultimate recipient. The Federal Circuit then explained that "merely omitting a step in a described process does not perforce expand the scope of the claim to encompass the use of devices that are nothing like those described in the specification as integral to the invention." As the patent specification stated that the SAFF contemplated by the invention was "an integral part of a switch telephone network system" and that the SAFF must have been capable of receiving fax message from, and sending fax messages to, conventional fax machines over a switched telephone network, these claims "must be understood to be limited to an apparatus that contains a storage medium and has the capacity to receive and transmit fax messages in fax protocol over a switched telephone network." As the accused system did not have the capacity to transmit fax messages over a switched telephone network to a fax-receiving device, the Federal Circuit affirmed the district court's order granting summary judgment of noninfringement.