There must generally be a nexus between the claim language and any teachings in the specification purported to define the claimed invention. Here, for example, the scope of the claimed “buffer memory” was found to be broader than the full-frame buffers described in the specification because the claims on their face did not require any particular storage capacity. “[S]tatements in the specification cited [as] purporting to define the invention are inapposite without language in the claims indicating a desire to claim the teachings disclosed.” It may therefore be helpful to include, at least in dependent form, consistent language that specifically couples the claims to any corresponding teachings in the specification.
Background / Facts: The patent being asserted here is directed to the transmit buffer of an Ethernet adapter, where data bound for the network from the host computer rests before being transferred to the network itself. The claims recite a “buffer memory for storing data of frames … for transmission.” The parties agree that if the claims require the buffer to be capable of storing a full-sized Ethernet frame, then the claims do not read on the prior art.
Issue(s): Whether the claimed “buffer memory,” when read in light of the specification and other claim elements, requires the buffer to have capacity to store an entire Ethernet frame.
Holding(s): No. “[A]ll that the claims require is that the buffer memory ‘stor[e] data of frames … for transmission.’ On its face, the claim says nothing about a buffer’s minimum storage capacity. The statements in the specification cited [as] purporting to define the invention are inapposite without language in the claims indicating a desire to claim the teachings disclosed. The claims do not say that the buffer must ‘store all the data of frames,’ or ‘store entire frames of data,’ or, tellingly, that the buffer even ‘store frames of data.’”