Fenner Inv., Ltd. v. Cellco Partnership: Interpreting "personal identification number" in telecom

Category: Claim Construction 
By: Jesus Hernandez, Blog Editor/Contributor   
TitleFenner Inv., Ltd. v. Cellco Partnership, No. 2013-1640 (Fed. Cir. Feb. 12, 2015).
IssueThe district court’s definition of “personal identification number” is the issue on this appeal. Fenner argues that the district court erred by construing “personal identification number” as a number that is associated with the individual user and not with the device. Fenner argues that the plain meaning of “personal identification number” does not contain or require this limited definition,
Fenner Inv., Ltd., at *4.
HoldingWe affirm the judgment [since the written description and prosecution history describe the “personal identification number” to be associated with individual users, and the doctrine of claim differentiation may not expand construction beyond that which is taught by the specification].
Id. at *2(text added).
Procedural HistoryFenner Investments, Ltd. appeals from the district court’s grant of summary judgment that Cellco Partnership, doing business as Verizon Wireless, does not infringe claim 1 of United States Patent No. 5,561,706 (the ’706 patent).
Fenner Inv., Ltd., at *2.
Legal Reasoning (NEWMAN, Schall, Hughes)
Claim 11. A method of providing access to a mobile user in a communications system having a plurality of interconnected radio frequency communication switches for selectively collecting calls to mobile users via radio frequency links, a plurality of billing authorities for maintaining service profiles of mobile users and a plurality of location authorities for maintaining current locations of mobile users within the interconnected communication switches, the method comprising:

receiving at a radio frequency communication switch a personal identification number from a mobile user;

receiving from the mobile user at the communication switch a billing code identifying one of the plurality of billing authorities maintaining a service profile for the mobile use[r],

wherein different ones of the plurality of billing authorities may maintain the service profile or a second profile for the mobile user identified by the personal identification number;

requesting a service profile of the mobile user from the billing authority identified by the received billing code;

storing in memory the service profile received from the billing authority; and

providing the mobile user access to the switch.

Fenner Inv., Ltd., at *3.
Legal Standard, claim constructionWords are symbols, linguistic embodiments of information sought to be communicated, and, as such, can be imperfect at representing their subject. The Supreme Court recently observed this challenge to patent claim interpretation, stating in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2128-29 (2014), that “the definiteness requirement must take into account the inherent limitations of language,” and that clarity is required although “recognizing that absolute precision is unattainable.” When the disputed words describe technology, the terse usage of patent claims often requires “construction” in order to define and establish the legal right. Judicial “construction” of patent claims aims to state the boundaries of the patented subject matter, not to change that which was invented.
Id. at *5.
The Written Description
The foundation of judicial claim construction is the “written description” in the specification. The patent statute requires that the claims “particularly point[] out and distinctly claim[] the subject matter” that the applicant regards as the invention. 35 U.S.C. §112(b). The district court appropriately consulted the description in the ’706 specification “for the purpose of better under- standing the meaning of the claim.” White v. Dunbar, 119 U.S. 47, 51 (1886).
Fenner Inv., Ltd., at *5-6.
The patent explains that this system is distinguished from non-PCS telephonic communications systems whose “billing and system management procedures are associated with the telephones present in a household or business” and “billing charges are associated with the telephone and not with the individual making the call.” ’706 Patent col. 1 ll. 16-22. Describing the PCS system as centered on the user instead of the device, the patent describes the “PCS concept envision[ing] each telephone user having a personal identification number” and “[b]illing and call servicing are identified with the individual personal identification numbers and not with a telephone unit.” Col. 1 ll. 24-30.
Id. at *7.
The Prosecution History
The prosecution history bolsters the district court’s construction that the term “personal identification num- ber” is a number associated with the user, not the device. See Phillips, 415 F.3d at 1317 (“[L]ike the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent.”).
Id. at *8.
During prosecution, the patent examiner rejected Fenner’s claims for obviousness in view of U.S. Patent No. 5,210,787 (“Hayes”). Hayes describes a system in which contact to a communications system is maintained through a process of “registration.” Hayes col. 1 l. 55 to col. 2 l. 5; col. 2 l. 65 to col. 3 l. 10. […] Fenner overcame this rejection by stressing that Hayes is a device-centered communication system, in contrast to Fenner’s user-centered design. Fenner argued that the mobile identification number of Hayes “is equivalent to a typical wireline telephone number since it must be assigned to a particular mobile communication switch or home exchange, much like a wireline telephone is.” J.A. 2508.
Id. at *8.
Claim Differentiation
Claim 19 states: “The method of claim 18 wherein the personal identification number of the source and the destination user are independent of a particular physical communications unit.” Id. col. 8 ll. 56-58. Fenner argues that since claim 19 is specific to the method where the personal identification number is independent of the device, the doctrine of claim differentiation requires that the foundation claims such as claims 1 and 18 are not so limited. Fenner argues that “if the term personal identification number always means that the number is never associated with any device . . . the limitation in Claim 19 would have been unnecessary.” Appellant Br. 29.
Id. at *11.
Although claim differentiation is a useful analytic tool, it cannot enlarge the meaning of a claim beyond that which is supported by the patent documents, or relieve any claim of limitations imposed by the prosecution history. See, e.g., Retractable Techs., 653 F.3d at 1305
Id. at *11.
We discern no error in the district court’s claim construction, and affirm the summary judgment of non-infringement based thereon.
Fenner Inv., Ltd.,  at *12.
 Image Attribution Statement: FIG. 1 of U.S. Patent No. 5,561,706.
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