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Federal Circuit Clarifies Claim Construction Of Indefinite Articles
04/18/2023On April 5, 2023, in a precedential order, the Court of Appeals for the Federal Circuit (CAFC) affirmed the Eastern District of Texas’s claim construction of U.S. Patent No. 5,802,467 (the “’467 patent”), as well as the jury’s corresponding finding of non-infringement. Salazar v. AT&T Mobility LLC, No. 2021-2320 (Fed. Cir. Apr. 5, 2023).
Joe Salazar, the owner of the ’467 patent, first sued HTC Corporation and HTC America in 2016. The jury in that case returned a verdict of non-infringement. Undeterred, Mr. Salazar then sued AT&T in 2019, asserting the ’467 patent against the same products he had challenged in the 2016 case.
At claim construction, the parties disputed the claim language surrounding “a microprocessor.” Specifically, the claims required “a microprocessor for generating a plurality of control signals …, said microprocessor creating a plurality of reprogrammable communication protocols …; a plurality of parameter sets retrieved by said microprocessor ...; [and] said microprocessor generating a communication protocol.”
Mr. Salazar argued that not all functions had to be performed by a single microprocessor and that, instead, a different microprocessor could perform each function. Per Mr. Salazar’s argument, the indefinite article “a” means “one or more” in the context of open-ended claims. And the subsequent use in the claim of the definite article “said,” to refer back to the same claim term, does not change this general plural rule, instead simply reinvoking that non-singular meaning. Accordingly, the claim terms would be construed as “[one or more] microprocessor[s] for generating a plurality of control signals …, [one or more] microprocessor[s] creating a plurality of reprogrammable communication protocols …; a plurality of parameter sets retrieved by [one or more] microprocessor[s]...; [and] [one or more] microprocessor[s] generating a communication protocol.”
AT&T argued, in response, that a single microprocessor had to perform each listed action because, under the antecedent basis rule, “said microprocessor” must refer to the previously named microprocessor. The district court agreed with AT&T, construing the claim to require a single microprocessor to perform each and every action, which ultimately led to the jury’s finding of non-infringement. Mr. Salazar appealed, and the CAFC reviewed the district court’s claim of construction de novo.
The CAFC acknowledged that Mr. Salazar was correct that the indefinite article “a” typically means “one or more,” and that the subsequent use of the definite article “said” does not change this general rule. However, the CAFC held that a reference to “said microprocessor” must be a reference to the same “one or more” microprocessors that were referred to earlier in the claim. In the language of the CAFC, “[f]or a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.”
