Applying Festo to Claim Construction: Construing an Amended Claim
Patent Law Blog (Patently-O):
University of Texas v. BENQ, et al. (Fed. Cir. 2008)
In 2005, UT filed suit against a total of fifty-six defendants alleging infringement of claims 10 and 11 of its patent that converts text messages into binary syllabic elements before transmission. After claim construction, the district court granted summary of non-infringement.
Construction of Amended Claim: The appeal focuses on the term “syllabic element.” UT wanted the phrase to be broader than “a character set of one syllable.” In its analysis of claim construction, the CAFC looked to the prosecution history.
After receiving a rejection during prosecution, UT added the “syllabic element” term to replace “an alphabetic character string” and cancelled a dependent claim directed toward matching whole words. On appeal, the CAFC gave “substantial weight” to these amendments — presuming that the amended phrase could not be as broad as the original:
“[C]laim 10 originally recited matching with an alphabetic character…