Iridescent Networks, Inc. v. AT&T Mobility, LLC (6:16-CF-01003-RWS, EDTX, Memorandum Opinion and Order dated July 18, 2017) provides an example of prosecution history that limits the construction of the claims. In an interesting facet of this case, the remarks of the Amendment provided a definition of “high quality of service connection,” and then immediately attempted to soften that definition as merely being an application-based example. The court, nonetheless, relied on that intrinsic evidence to arrive at their claim construction.
The case involves US8,036,119. The parties agreed that the term “quality of service” is a term of art understood by a PHOSITA, but that the term “high quality of service” is not a known term of art, but rather a term coined by the patentee. The parties proposed the following constructions:
The court noted that, in response to an Office Action, the applicant stated:
“As illustrated by the boxed set of applications on the left side of Fig. 3, high QoS (quality of service) may be viewed in the present application as having speeds varying from approximately 1–300 megabits per second, packet loss requirements that are typically about 10-5, and latency requirements that are typically less than one second. These are commonly used parameters and, as illustrated in Fig. 3, often vary somewhat based on the type of application.”
Notably the last sentence quoted above attempted to limit the prosecution history as merely an example based on one type of application, a definition that is consistent with the specification. However, the court did not buy this argument and, instead, in adopting the Defendant’s proposal, limited the claim construction based on this prosecution history.
This case is a reminder that remarks in Amendments should be finely tuned. In this example, however, such an effort in the Amendment itself to limit the prosecution history of the Amendment to merely a non-limiting example was unsuccessful.