Inconsistent terminology in the specification may render claims indefinite when the claims rely on a minority interpretation. Here, for example, because the claimed “byte sequence feature” is predominantly described in the specification as referring to the machine code in an executable file, the claimed use of this term as referring to other “resource information” distinct from the machine code was found to render the claims indefinite even though there was one embodiment in the specification that used this term in the manner claimed. “The patentee cannot rely on its own use of inconsistent and confusing language in the specification to support a broad claim construction which is otherwise foreclosed.” It may therefore be best to ensure that claim terminology is used consistently throughout the specification.
Background / Facts: The patents being asserted here are directed to a computer security program that is taught to distinguish between a malicious file and a non-malicious file by inputting various known malicious and benign files and instructing the computer to examine various “byte sequence features” common to these files. While the specification and incorporated provisional application predominantly refer to “byte sequence features” as representing the machine code in an executable file, one embodiment and the claims use this term to refer to other “resource information” in the executable file, distinct from the machine code.
Issue(s): Whether the claimed “byte sequence feature” is nevertheless limited to only being made up of machine code instructions.
Holding(s): Yes. “This single sentence in the specification cannot overcome the overwhelming evidence in other parts of the specification and the provisional application [] demonstrating that the intended definition of this term does not include information other than machine code instructions. The patentee cannot rely on its own use of inconsistent and confusing language in the specification to support a broad claim construction which is otherwise foreclosed.” Because the claims “conflate a ‘byte sequence feature,’ which is a feature extracted from machine code instructions, with the extraction of ‘resource information,’ which is not a machine code instruction,” they are ultimately “nonsensical” and indefinite.