For disclaimer to attach to a given claim term, there must be a clear and unmistakable disavowal of claim scope by the applicant. Comments by other parties, such as the examiner in his or her reasons for allowance, are not by themselves sufficient to rise to the level of a disclaimer. They may instead be simply considered, as here, inaccurate and “at worst a slip.” Moreover, the certainty required for disavowal may scale with the strength of the ordinary meaning at issue. When there is “no facial ambiguity or obscurity in the claim term,” such as terms like “volatile” and “non-volatile” memory, the terms may “have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification.” In such instances, “a clear ordinary meaning is not properly overcome (and a relevant reader would not reasonably think it overcome) by a few passing references that do not amount to a redefinition or disclaimer.”
Background / Facts: The patent being asserted here is directed to a method of preventing unauthorized software use by checking whether a software program is operating within a license and stopping the program or taking other remedial action if it is not. In contrast to other anti-piracy software, the method uses the memory space associated with the computer’s basic input / output system (BIOS), rather than other memory space, to store appropriately encrypted license information to be used in the verification process. The parties do not meaningfully disagree about the ordinary meaning of the claim terms at issue on appeal: “program,” “volatile memory,” and “non-volatile memory.” Instead, the accused infringer has relied on examples in the specification, as well as statements by the applicants and the examiner during prosecution, to argue that the terms do not have those ordinary meanings in this patent.
Issue(s): Whether (1) the claim term “program” (which is to be verified for authorization under a license) is limited to an application program, i.e., one that relies on an operating system in order to run, thus excluding an operating system itself, and whether (2) the claim terms “volatile memory” and “non-volatile memory” are indefinite because an example given in the specification is irreconcilable with the ordinary meaning of the terms.
Holding(s): No, on both issues. (1) “Although [the accused infringer] makes much of language [in an amendment submitted by the applicants] about storing ‘application data’ in the BIOS area, … nothing in the applicants’ statements indicates that the ‘application’ in question is the to-be-verified software, as opposed to the verifying software; and in any event, the language does not rise to the level of a disclaimer regarding [the] nature of the to-be-verified software.” In particular, “[t]he reference to the invention as a ‘license management application[]’ and the identification of persons of ordinary skill in the relevant art as ‘application programmers’ who ‘make[] use of OS features’ demonstrate that the applicants understood that their claimed methods would be implemented as application software, rather than lower-level system software. But those representations, made in distinguishing prior art, concerned software that implemented the invented method. The to-be-verified software is different from the verifying. … Likewise, although the examiner stated in his reasons for allowance that ‘the closest prior art systems, singly or collectively, do not teach licensed programs running at the OS level interacting with a program verification structure stored in the BIOS,’ … that statement is at worst a slip: under the claims, it is indisputably the verifying software that interacts with the verification structure. In any event, the statement is not the applicants’ statement.” (2) The accused infringer’s argument rests on the fact that, three times, the specification uses language referring to a hard disk as an example of volatile memory, in contrast to the usual classification of hard disks. However, “[t]o begin with, the terms at issue have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification. There is no facial ambiguity or obscurity in the claim term. Moreover, the specification nowhere purports to set out a definition for ‘volatile’ or ‘non-volatile’ memory, and nothing in it reads like a disclaimer of the clear ordinary meaning. Under our claim-construction law, a clear ordinary meaning is not properly overcome (and a relevant reader would not reasonably think it overcome) by a few passing references that do not amount to a redefinition or disclaimer.” In addition, in this case, “[a]lthough oddly phrased,” there is at least some evidence that “the patentee meant to refer to the hard disk only in its capacity as supplemental memory in conjunction with the main RAM—rather than to assert, in a passing and indirect manner, a meaning sharply in conflict with clear usage.”