Claim terms may be limited by an espoused “purpose of the invention” where the specification demonstrates that a particular shortcoming “was a defining feature of [the] prior art,” and that “the patented invention was designed to eliminate” that shortcoming, under the rationale that “the claims cannot be of broader scope than the invention that is set forth in the specification.”
Background / Facts: The patent being asserted here is directed to converting software applications into a form that minimizes the computing resources that the application consumes during storage and execution. Although the specification specifically touts the efficiency gains as allowing resource-constrained microcontrollers or smart cards to run applications written in high level programming languages (such as Java), the claims more generically recite an integrated circuit card that includes a processor and a “memory” storing the converted application and a corresponding “virtual machine” interpreter. This is important because, to run a Java application, both the application and the interpreter must fit within the constraints of the platform for the purposes of storage and execution.
Issue(s): Whether interpreting the claimed “memory” in light of the specification requires that all of the application memory be stored on the same chip as the processor.
Holding(s): Yes. “The specification demonstrates that the entire purpose of the invention was to enable the application to be stored within the memory on the chip of the integrated circuit card.” Although the specification “identifies configurations in which a processor runs Java applications stored in off-chip memory,” it “ascribes them to the prior art—i.e., microprocessor-based personal computers.” According to the specification, the crucial difference between prior art microprocessor-based computers and microcontroller-based devices is that “[i]n a microcontroller, the amount of each kind of memory available is constrained by the amount of space on the integrated circuit,” while “[a] microprocessor system … is not constrained by what will fit on a single integrated circuit.” Thus, the court found that “[t]he specification demonstrates that external memory storage was a defining feature of prior art Java technology, and that the patented invention was designed to eliminate the need for such external storage.”