A broad term in the claims cannot “rewrite the patent.” Make sure your specification adequately supports your broader terms and avoid characterizing the “invention” as something more specific.
Background / Facts: The patent here provides a “dynamically generated, transient applet” designed to address perceived problems in using bulkier generic software applications on “handheld and credit-card-sized” computers, which have limited memory and often operate over low-speed or wireless networks. Individualized applets, according to the specification, reduces the size of the applet and reduces the number of times the client computer needs to communicate with the server. Asserted claim 1 recites that the applet is “generated” in response to a user request, is “executable” and “operable,” is “associated with” the two “constituent” systems of particularized data and functionality, and is thereafter “to be transferred.”
Issue(s): Whether the claims require that the applet be executable or operable when it is generated and before it is first transmitted to the client, in contrast to the accused devices, which each include a link for subsequently retrieving functionality after the applet is transferred.
Holding(s): Yes. Despite the broad “associated with” language in the claims, the specification makes clear that in the “present invention,” “the appropriate data and associated data handling capabilities” are transmitted “as a group … According to the teachings of the present invention, when the applet 26 is generated, the applet 26 does not merely contain an executable program as with typical applets. In contrast, the applet 26 also comprises particular services and data for the client 12 based on the request.” The court noted that “[i]f Parallel’s [broader] position were adopted, it would permit the broad term ‘associated with’ to effectively rewrite the patent. Notwithstanding the potential breadth of the phrase ‘associated with,’ it is clear that the patent teaches an applet containing both the data and the functionality when the applet is generated.”