Repeatedly touting a particular characteristic of a claimed feature as being advantageous without providing any broader embodiments reinforces that characteristic as essential. Here, for example, a “security device” was found to be limited to a stand-alone device that is separate from and external to the associated microprocessor device(s) for which it provides encryption and decryption services because the specification not only described specific advantages gained from separating the security device from the microprocessor-based device, but also never once suggested embedding the security device within the microprocessor-based device. It may therefore be helpful to provide in the specification broader counterexamples in which any feature touted as advantageous but not required is absent.
Background / Facts: The patents being asserted here are directed to securing communications between two microprocessor devices, such as between two telephones, fax machines, and/or computers. The patents describe achieving secured communications through the use of a “security device,” which has encryption and decryption capabilities and interfaces with each of the microprocessor devices.
Issue(s): Whether the claimed “security device” should be construed as a stand-alone device that is separate from and external to the associated microprocessor device(s) for which it provides encryption and decryption.
Holding(s): Yes. “All descriptions of the security device in the intrinsic record are limited to a stand-alone device. Nothing in the intrinsic record suggests that the patentee intended a broader notion of a security device. Significantly, at no point does the specification contemplate a security device embedded within a microprocessor-based device. To the contrary, the specification touts the separate and stand-alone nature of the security device as an advantage.” For example, the background section “characterizes the security device as an add-on component to existing microprocessor-based devices” and “the specification explains that separating the security device from the microprocessor-based device advantageously allows a user to secure data residing in the microprocessor-based device in the event it is lost or stolen.”