Plain and Ordinary Claim Construction

In Wisconsin Alumni Research Foundation v. Apple, No. 2017-2265 (Fed. Cir. Sept. 20, 2018), the Federal Circuit construed a pair of claim terms under their plain and ordinary meaning in reversing summary judgment that Apple was not entitled to a pre-trial finding of non-infringement of U.S. Patent 5,781,752, while affirming a summary judgment that the ‘752 patent was not anticipated.

The ’752 patent is owned by the Wisconsin Alumni Research Foundation (WARF) and is directed to the storage, retrieval, and processing of data by a processor. In particular, the claims of the ‘752 patent provide an improvement to processing technology by enabling the processor to execute program steps in an order that is different that their program order. Steps may be performed out of order when the results of one step are not necessary for another step. The claimed invention includes a “predictor” that makes predictions for a “particular” load instruction based on a mis-speculation instruction. The predictor uses a table that associates a load tag with a load instruction. The predictor updates the prediction as the program is run.

At the district court, neither WARF nor Apple sought construction of the term “particular.” However, WARF unsuccessfully moved before trial to exclude testimony of Apple’s expert witness from testifying that “particular” means that each prediction, e.g., each load tag, only be associated with a single load instruction. The district court agreed with Apple’s construction based on reading the asserted claim as a whole and permitted the expert to testify.

On appeal WARF did not challenge that “particular” should be given its plain and ordinary meaning, but rather that the plain and ordinary meaning was not properly decided. The Federal Circuit upheld the district court’s construction under the plain and ordinary meaning based on reading the patent as a whole.

After agreeing with the construction that “particular” meant that each load tag be associated with only a single load instruction, the Federal Circuit went on to reverse the denial of Apple’s summary judgment motion for non-infringement. The Federal Circuit explained that no reasonable juror could have found that the “particular” limitation was met because Apple’s accused products used a maximum of 4,096 different load tags which could be associated with a plurality of the millions of load instructions of Apple’s operating system. Further, the Federal Circuit was unpersuaded by WARF that is was possible that some of the load tags may have been associated with only a single load instruction because WARF mischaracterized statistics indicating performance increases of Apple’s products relating to “aliasing” as statistics indicating a frequency of “aliasing.” WARF had also used an improper definition of such term. In other words, WARF simply failed to provide enough support for their argument regarding the possibility of Apple’s product to have a load tag associated with only one load instruction.

With regard to the term “prediction,” Apple argued that under a plain and ordinary meaning the prediction could be a static prediction, i.e., not capable of receiving updates. The Federal Circuit again looked to the patent and a whole and construed the plain and ordinary meaning of “prediction” as requiring an ability to receive updates, known as a dynamic prediction. In making this determination the Federal Circuit noted that all discussions of predictions in the patent were dynamic, and that the patent contained no references to static predictions. Including static predictions in the construction of “prediction” would have expanded the scope of the claims far beyond anything described in the specification. The Federal Circuit used this construction when upholding the denial for summary judgement of the patent as anticipated by prior art, as such prior art failed to disclose dynamic predictions.

Lessons for Practice

Claim construction is typically thought of as being limited to early stages of litigation during a Markman hearing. However, as the above case teaches us, simply relying on plain and ordinary meanings of claim terms may provide room for argument of what is encompassed by such terms throughout the entire litigation process. Could WARF had successfully argued for its interpretation of “particular” at the Markman stage? Would the Federal Circuit have a different opinion if WARF provided an expert at trial that was able to persuade the jury to WARF’s understanding of “particular”?