Take care to provide unambiguous antecedent basis in your claims when referring to “each” of a plurality of elements. Although departing from standard claim drafting practice (and common sense), the court found enough wiggle room here to hold that “each heuristic module” does not refer back to the “plurality of heuristic modules,” but instead to all heuristic modules in the accused device as a whole because there was nothing to explicitly tie “each” element to the plurality. It appears that the more clear language would have been, at a minimum, “each of the heuristic modules,” and perhaps “each of the plurality of heuristic modules” to be safe.
Background / Facts: This case concerns patents covering Apple’s Siri search function (“unified search” across the internet, local hard drives, etc.) and Samsung’s Galaxy Nexus. It is different from the parallel litigation over Samsung’s Galaxy Tab, in which the jury recently awarded Apple $1.05B. Here, the Federal Circuit lifted the preliminary injunction against the Nexus smartphone primarily for lack of irreparable harm, making it more difficult to obtain injunctive relief for “component” patents where the end product includes many small innovations. However, the most salient aspect from a prosecution standpoint is the collateral issue of claim construction, which the court felt the need to address even though the preliminary injunction issue could have been fully decided on the irreparable harm grounds.
Issue(s): Whether the claim limitation of “a plurality of modules … wherein … each heuristic module corresponds to a respective area of search and employs a different, predetermined heuristic algorithm” requires that all modules of the accused device (not just a hand-picked plurality) employ a different heuristic algorithm.
Holding(s): Yes. Apple, according to conventional claim drafting wisdom, argued that the claim requires “a plurality” (just one) in which every module has a different heuristic algorithm (compared to the other modules within that plurality). Accordingly, as long as there is one such “one plurality” – i.e., at least two modules with different heuristic algorithms – the key limitation is satisfied. As to any remaining modules, the claim uses the open-ended term “comprising” in listing the limitations and thus, the addition of other modules does not defeat a showing of infringement. The Federal Circuit rejected this line of reasoning. “[D]espite the use of ‘comprising,’ claim 6 is not amenable to the addition of other modules that do not use different heuristic algorithms because such addition would impermissibly wipe out the express limitation that requires every module to have a unique heuristic algorithm.”