Although the Federal Circuit has “cautioned against indiscriminate reliance on foreign file histories,” it has acknowledged that “statements made before foreign patent offices are sometimes relevant to interpreting the claims.” This is particularly true where, as here, the statements pertain to express definitions of certain claim terms, which does not implicate “the varying legal and procedural requirements for obtaining patent protection in foreign countries [that] might render consideration of certain types of representations inappropriate for consideration in a claim construction analysis of a United States counterpart.”
Background / Facts: The patent being asserted here is directed to facilitating mobility among wireless networks. To allow users in a roaming network to make calls as if in their home network, the patent discloses and claims the use of an “intelligent gateway.” Although the term “gateway” has a well-understood meaning in the art, as evidenced by technical dictionaries which define a “gateway” to be a connection between different networks, the patentee asserted a broader interpretation at claim construction that would cover any network element performing the recited functions.
Issue(s): Whether the specification evinces a clear intent to impart a novel meaning to the claim term “gateway” so as to depart from its ordinary meaning.
Holding(s): No. “Considering ‘gateway’ in the context of the claims and specification of the … patent, one of ordinary skill would have understood that the inventors did not depart from the ordinary meaning of ‘gateway’ with their use of the term ‘intelligent gateway.’” In further citing the prosecution history of a related European application, the court noted that the patentee explicitly “argued in a related foreign application that ‘a gateway provides access to an external environment beyond the immediate network,’ and that ‘the term ‘intelligent gateway’ is defined in this way, that is in terms of an access means from one network to another.’ … Although we view [the patentee’s] statements with the requisite caution, they do provide yet another indication that the patentees did not intend to depart from the ordinary meaning of ‘intelligent gateway.’”