Use of open-ended terms such as “including” does not “trump[] consideration of the specification and prosecution history and displace application of standard claim construction principles.” To the contrary, “it is well-established that claim terms must be construed in light of the entire patent, including the written description and prosecution history.”
Background / Facts: The patent being asserted here is directed to a wireless two-part computer system, including: (1) a stationary base storage and control unit; and (2) a portable input-output unit. The split-device design with its portable unit (e.g., keyboard / display) is intended to create a portable way to access a personal computer and “to allow the user to change locations, at least over a limited area, while exerting full control over the computer.” The specification and prosecution history tout the limited functionality of the portable unit as providing advantages in terms of weight and form factor. The accused products are tablets that incorporate CPU and RAM, and have full processing capabilities.
Issue(s): Whether, despite the specification and the prosecution history, the use of the open-ended term “including” in listing the limited components of the portable unit allows the claims to cover fully functional devices in an accused product as long as the input-output components are all present.
Holding(s): No. “Review of the district court’s partial claim construction order reveals that it focused exclusively on the term ‘including’ when arriving at its construction for ‘input-output system.’ In doing so, the court failed to properly consider the limiting language in the written description and the statements [the patentee] made over the course of the prosecution history, including his own characterization of the input-output unit as a ‘dumb terminal.’ In other words, the [district] court gave controlling effect to the word ‘including’ without reference to the claim language following it, the patent in which it appears, and the patent’s prosecution history.”