Any combination that is thoroughly disparaged in the specification will be generally found to be disclaimed from the ultimate claim scope. Here, for example, the fact that the specification was rife with remarks that disparage more complex mobile devices incorporating “computer modules” was found to be sufficient to disclaim computer-module-based devices from the claimed “mobile devices,” despite the otherwise plain and ordinary meaning of the term. It may therefore be best to generally avoid disparaging any particular combination in the specification that would be covered by the plain and ordinary meaning of the claim terms.
Background / Facts: The patents being asserted here are directed to simplified “mobile devices” that address the limitations of conventional “intelligent device” telephones that were too big in size, too expensive to produce, and had problems with battery life. To overcome these difficulties, the specification describes “ways to divide the computing power between a device and its remote server,” thus “eliminat[ing] the need for devices to employ full computing capacity on their own.”
Issue(s): Whether, in contrast to its plain and ordinary meaning, the claimed “mobile devices” cover only mobile devices with small “microcontrollers”—which facilitate communications between the client device and the server—and exclude mobile devices that contain more robust “computer modules”—which serve to localize more of the computational processes onto the mobile device itself.
Holding(s): Yes. Citing strong and pervasive statements in the specification concerning how “cellular telephone 100 is not a combination of a computer module and a wireless communication module as in prior art attempts to create an intelligent telephone,” but rather “utilizes only a microcontroller found in telephone 100 and does not require[] a separate computer module as in the prior art,” the court found that “the specification of the patents-in-suit is rife with remarks that disparage and, therefore, disclaim mobile devices that incorporate computer modules.” The claims cannot be interpreted to cover “[a] combination [that] constitutes the very embodiment that gives rise to the problems the invention purports to solve (namely, the bulk, cost, inflexibility, and short battery life of intelligent devices).” While “[t]here is no doubt a high bar to finding disavowal of claim scope through disparagement of the prior art in the specification,” in this case, “it is difficult to envisage how, in light of the repeated disparagement of mobile devices with ‘computer modules’ discussed above, one could read the claims of the patents-in-suit to cover such devices.”