Categories: 112 - Definiteness
      Date: Mar  4, 2014
     Title: Ancora Tech. v. Apple: Resolving Ambiguities in view of Ordinary Meaning to Claim Terms
Category: 112 - Definiteness 
 By: Jesus Hernandez, Blog Editor/Contributor
TitleAncora Tech., Inc. v. Apple, Inc., No. 2013-1378, -1414 (Fed. Cir. March 3, 2014).
[1] [Relying on examples in the specification and prosecution history], Apple has argued that the term “program” (which is to be verified for authorization under a license) is limited to an application program, i.e., one that relies on an operating system in order to run, thus excluding an operating system itself.
Ancora Tech., Inc. at *4 (text added).
[2] Apple also has argued that the terms “volatile memory” and “non-volatile memory” are indefinite because an example given in the specification is irreconcilable with the ordinary meaning of the terms [which refers to a “hard disk” as volatile memory, although “hard disks” are understood in the art to be non-volatile memory].
Id. at *4 (text added).
[1] A claim term should be given its ordinary meaning in the pertinent context, unless the patentee has made clear its adoption of a different definition or otherwise disclaimed that meaning. […] There is no reason in this case to depart from the term’s ordinary meaning [since the specification does not deviate from the ordinary meaning, and statements made during prosecution implicate a specific aspect of the program and are not sufficient to narrow the ordinary meaning of "program" to exclude an operating system].
Ancora Tech., Inc. at *5 (internal citation omitted, text added).
[2] [The specification acknowledges that a “hard disk,” which is generally understood as a non-volatile memory, can also act as a virtual volatile memory source. Therefore,] under the demanding standards for displacing as clear an ordinary meaning as exists in this case, we doubt that an ordinarily skilled artisan could have a reasonable uncertainty about the governing scope of the claims […].
Id. at *12 (text added).

Procedural HistoryIn December 2010, Ancora sued Apple Inc., alleging that products running Apple’s iOS operating system infringed the ’941 patent. The United States District Court for the Northern District of California construed the claims. […] Ancora stipulated to summary judgment of non-infringement under the district court’s construction of the claim term “program.” The district court subsequently entered final judgment dismissing all claims and counterclaims. Ancora appeals the district court’s construction of “program,” while Apple cross- appeals the district court’s holding that the terms “volatile memory” and “non-volatile memory” are not indefinite.
Ancora Tech., Inc. at *2 (internal citations omitted).
Legal Reasoning (Rader, CJ, Taranto, Chen)
Claim at issue1. A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:

selecting a program residing in the volatile memory,

using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,

verifying the program using at least the verification structure from the erasable non- volatile memory of the BIOS, and

acting on the program according to the verification.

Ancora Tech., Inc. at *3-4.
[1] Specification and Prosecution History conform to Ordinary Meaning, with Ambiguities in Prosecution History Not being enough to Rebut Ordinary Meaning
In view of the claims: Claim differentiation of two independent claimsClaim 1 recites a “method of restricting software operation” (if license coverage of the software cannot be verified) and refers to the restricted software simply as a “program.” ’[…] In contrast, independent claim 18, which is not asserted here, recites a “method for accessing an application software program” and then repeatedly refers to the “application software program.” […] Although claim 18 is not a dependent claim, and claim differentiation as an interpretive principle is often of limited importance, the difference in terminology tends to reinforce, rather than undermine, adoption of the broad ordinary meaning of “program” by itself.
Ancora Tech., Inc. at *5 (internal citation omitted).
In view of the specification: no narrowing definitionsNothing in the specification clearly narrows the term “program.” The general disclosure in the specification refers to the to-be-verified software as a “software pro- gram,” “software,” or a “program,” without limiting the subject matter to particular types of programs. […] The only instances in which the specification discusses using the claimed invention to verify application programs are found in examples that the specification makes clear are not limiting.
Id. at *6 (internal citation omitted).
In view of the prosecution history: Not sufficient to narrow definitionThe reference to the invention as a “license management application[]” and the identification of persons of ordinary skill in the relevant art as “application programmers” who “make[] use of OS features” demonstrate that the applicants understood that their claimed methods would be implemented as application software, rather than lower-level system software. The to-be-verified software is different from the verifying software. The statements from the prosecution history on which Apple relies do not say that the program being verified must be an application program.
Id. at *8.
[2] "Volatile" and "Non-Volatile" are not Indefinite, as Specification Conforms to Well-known Meaning
Legal StandardUnder what is now 35 U.S.C. § 112(b), a claim must be “sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent.” […]. The Supreme Court currently is considering how to refine the formula- tions for applying the definiteness requirement. See Nautilus, Inc. v. Biosig Instruments, Inc., Sup. Ct. No. 13- 369, cert. granted, 2014 WL 92363 (Jan. 10, 2014). In this case, we think that we can reject the indefiniteness challenge without awaiting the Court’s clarification.
Ancora Tech., Inc. at *10 (some internal citations omitted).
Plain and Ordinary MeaningTo begin with, the terms at issue have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification. There is no facial ambiguity or obscurity in the claim term. Moreover, the specification nowhere purports to set out a definition for “volatile” or “non-volatile” memory, and nothing in it reads like a disclaimer of the clear ordinary meaning. Under our claim-construction law, a clear ordinary meaning is not properly overcome (and a relevant reader would not reasonably think it overcome) by a few passing references that do not amount to a redefinition or disclaimer.
Ancora Tech., Inc. at *11.
Resolving Specification Ambiguity[I]t is well known that a computer’s hard disk is routinely used as “virtual” memory to provide temporary storage when there is insufficient RAM to complete an operation, […] in which case (it is undisputed) the data become inaccessible through the usual means once power is removed (even if the data can still be found on the hard disk by more sophisticated means), […]. This explanation for the otherwise-perplexing example of a hard disk as “volatile” memory finds support in the specification’s statement that “the volatile memory is a RAM e.g. hard disk and/or internal memory of the computer.” […]. Although oddly phrased, the reference to a “hard disk” as an example of RAM suggests that the patentee meant to refer to the hard disk only in its capacity as supplemental memory in conjunction with the main RAM—rather than to assert, in a passing and indirect manner, a meaning sharply in conflict with clear usage.
Id. at *11-12 (internal citations omitted).
Prosecution History[The examiner rejected the claims under 102 relying on the standard definition of ‘non-volatile’ and] rejected the claims for indefiniteness because of the specification references to a hard disk as volatile. Id. at 5- 6. The applicants responded by amending the claims to restrict the covered non-volatile memory to a memory area of the computer BIOS and did not dispute the examiner’s understanding of “volatile” and “non-volatile” memory in their ordinary meaning (for the anticipation rejection). Amendment dated Nov. 14, 2001, in Appl. No. 09/164,777. The examiner was clearly satisfied both as to anticipation and as to indefiniteness, even though the amended claim still referred to “volatile” memory stand- ing alone (and “non-volatile” areas associated with the BIOS), because he allowed the amended claims.
Id. at *13 (text added).
For the foregoing reasons, we reverse the district court’s construction of “program” as limited to application programs, affirm the court’s conclusion that the terms “volatile memory” and “non-volatile memory” are not indefinite, and remand.
Ancora Tech., Inc. at *14.
Image Attribution Statement: Nino Barbieri, “Tire Traces,” available under a Creative Commons Attribution-Share Alike 2.5 Generic,, (last visited March 4, 2014) (edited).