A claim term used in exactly the same way as in conventional systems will be interpreted to require all the standard features thereof. Here, for example, the claimed “virtual machine” was interpreted as requiring the typical limitation of conventional “virtual machines” that the applications they run are not dependent on any specific underlying operating system or hardware. If any such features are not required for the claimed invention, it may be best to use different terminology.
Background / Facts: The case at bar here is on remand from the Supreme Court for further consideration in light of the extrinsic evidence standard of review set forth in Teva. Ultimately, “[b]ecause this case does not involve the factual findings to which we owe deference under Teva,” the Federal circuit concluded that its prior analysis was substantively appropriate, even if imprecise. As before, the patents being asserted here are directed to software for small, specialized computers, like payment terminals. The claims recite optimizations of an otherwise conventional “virtual machine,” which acts as an interpreter between an application program (like a particular merchant’s payment processing software) and a payment terminal’s underlying hardware and operating system. The accused devices run applications that depend on a specific underlying operating system or hardware.
Issue(s): Whether the claimed “virtual machine” requires the typical limitation of conventional “virtual machines” that the applications they run are not dependent on any specific underlying operating system or hardware.
Holding(s): Yes. “The specification and prosecution history establish, and relevant precedent discussing the state of the art at the time of the invention confirms, that at the time the asserted patents were filed, the defining feature of a virtual machine was its ability to run applications that did not depend on any specific underlying operating system or hardware.” For example, the prosecution history expressly ties what is stated to be a “conventional” Java virtual machine acknowledged to operate in this manner to the claims, which were described as reciting “an addition to a conventional virtual machine,” not a wholly new structure. “In short, nothing in the specification or prosecution history casts doubt on the plain and ordinary meaning of the term ‘virtual machine.’ [] Here, the asserted patents use ‘virtual machine’ in exactly the same way [conventional systems] used the term—the patents simply optimize the virtual machine for use on a payment terminal.”