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The Dangerous Upstream Use of Related Patents' Prosecution History to Interpret Claims in Already Issued Patents, The Missouri Law Review Volume 70 Issue 1 Winter 2005 Article 13 Winter 2005 Federal Circuit Makes a Leap in Logic: The Dangerous Upstream Use of Related Patents' Prosecution History to Interpret Claims in Already Issued Patents, The Jason R. Mudd Follow this and additional works at: https://scholarship.law.missouri.edu/mlr Part of the Law Commons Recommended Citation Jason R. Mudd, Federal Circuit Makes a Leap in Logic: The Dangerous Upstream Use of Related Patents' Prosecution History to Interpret Claims in Already Issued Patents, The, 70 MO. L. REV. (2005) Available at: https://scholarship.law.missouri.edu/mlr/vol70/iss1/13 This Note is brought to you for free and open access by the Law Journals at University of Missouri School of Law Scholarship Repository. It has been accepted for inclusion in Missouri Law Review by an authorized editor of University of Missouri School of Law Scholarship Repository. For more information, please contact [email protected]. Mudd: Mudd: Federal Circuit Makes a Leap in Logic: The Federal Circuit Makes a "Leap in Logic": The Dangerous Upstream Use of Related Patents' Prosecution History to Interpret Claims in Already Issued Patents Microsoft Corporationv. Multi-Tech Systems, Inc.1 I. INTRODUCTION The United States Constitution gives Congress the power "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and 2 Discoveries.", Courts emphasize two mechanisms by which patents fulfill their instrumental justification. The possibility of obtaining a patent monop- oly encourages investment in research to make new inventions, and disclo- sure of new inventions increases the amount of public knowledge. An invention is "patentable" if it falls within an eligible subject matter 5 category and "satisfies the statutory requisites of novelty, nonobviousness, 6 utility, and adequate disclosure." That is, an invention must be new, not ob- vious in light of existing art, useful, and sufficiently described. A patent al- lows the patentee "to exclude others from making, using, selling, or offering 7 to sell the claimed invention." The patent's claims define the bounds of this 1. 357 F.3d 1340 (Fed. Cir. 2004). 2. U.S. CONST., art. I, § 8, cl. 8. 3. Rebecca S. Eisenberg, Patents and the Progressof Science: Exclusive Rights and Experimental Use, 56 U. CHI. L. REv. 1017, 1024 (1989). 4. Id. (citing Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480-81 (1974)). 5. See 35 U.S.C. § 101 (2000). A verson who "invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Id. The Supreme Court has interpreted eligibile subject matter broadly, holding that "anything under the sun that is made by man" is patent eligible. Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (internal quotations omit- ted). 6. MARTIN J. ADELMAN ET AL., CASES AND MATERIALS ON PATENT LAW 57 (2d ed. 2003). 7. Id. at 525; see 35 U.S.C. § 271(a) (2000) ("Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."), held unconsti- tutional by Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Say. Bank, 527 U.S. 627 (1999) (as applied to suits for patent infringement against state govern- ments). Published by University of Missouri School of Law Scholarship Repository, 2005 1 Missouri Law Review, Vol. 70, Iss. 1 [2005], Art. 13 MISSOURI LAW REVIEW [Vol. 70 right to exclude. 8 Claim drafting, the initial attempt to define a patentee's rights, has been defined as, "without doubt, the most difficult form of techni- cal writing." 9 Once a dispute arises, claim interpretation is the most essential step in defining a patentee's rights and determining whether infringement has occurred. 10 Not surprisingly, trial courts struggle with claim construction and the Federal Circuit, the court with exclusive jurisdiction over all patent appeals, changes the trial court's claim construction about 40 percent of the time." To construe claims, courts must examine the language of the claims themselves, the rest of the patents' specifications, and, if in evidence, the prosecution history.' 2 Courts will often look to the prosecution history of related patents a patent family.' 3 to aid in interpreting claims consistently within The Federal Circuit, in Microsoft Corp. v. Multi-Tech Systems, Inc., used prosecution history from a subsequent related patent application to limit claim language in an earlier patent and settle an important legal battle affect- ing the rapidly growing internet telephony industry. 14 This Note examines the majority's seemingly logical reasoning but ultimately agrees with the analysis of Judge Rader's dissent. II. FACTS AND HOLDING Multi-Tech Systems, Inc., owns a series of patents related to methods15 digital computer data. for simultaneously transmitting digital voice data and 16 These related patents all derive from the same parent application and share a common specification, or written description.' 7 On February 15, 2000, Multi- 8. ADELMAN ET AL., supra note 6, at 525. 9. Id. at 533. 10. See id. at 525. 11. Gretchen Ann Bender, Uncertainty and Unpredicatability in Patent Litiga- tion: The Time Is Ripe for a Consistent Claim ConstructionMethodology, 8 J. INTELL. PROP. L. 175, 175 (2001). 12. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1324 (Fed. Cir. 2003) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). 13. See, e.g., Laitram Corp. v. Morehouse Indus., Inc., 143 F.3d 1456, 1460 n.2 (Fed. Cir. 1998); Jonsson v. Stanley Works, 903 F.2d 812, 818 (Fed. Cir. 1990). 14. See Declan McCullagh, Microsoft Wards off Voice-Data Lawsuit, CNET 4 NEWS (Feb. 5, 2004), at http://news.com.com/2100-101 _3-5153929.html. 15. Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1342 (Fed. Cir. 2004). 16. Id. See also U.S. Patent No. 5,452,289 (issued Sept. 19, 1995). 17. Microsoft, 357 F.3d at 1342. Related applications which derive from a parent patent share the same specification. See Microsoft Corp. v. Multi-Tech Sys., Inc., Nos. Civ. 00-1412 ADM/RLE, Civ. 00-1627 ADM/RLE, 2002 WL 1949755, at *1 (D. Minn. Aug. 16, 2002) (mem.), aff'd, 357 F.3d 1340 (Fed. Cir. 2004). https://scholarship.law.missouri.edu/mlr/vol70/iss1/13 2 Mudd: Mudd: Federal Circuit Makes a Leap in Logic: 2005] UPSTREAM USE OF PATENTS'PROSECUTION HISTORY 293 Tech filed suit against Net2Phone, Inc., in the United States District Court for the District of Minnesota alleging infringement of four of its patents.' 8 Four months later, apparently fearing that it might also be infringing on those pat- 9 ents,1 Microsoft filed suit against Multi-Tech in the same court seeking "a declaratory judgment of noninfringement, invalidity, and unenforceability of seven Multi-Tech patents." 20 Multi-Tech answered with a counterclaim alleg- ing infringement of five of its patents.2' The interpretation of claims from these five patents, United States Patent No. 5,452,289 ("the '289 Patent"), United States Patent No. 5,471,470 ("the '470 Patent"), United States Patent No. 5,600,649 ("the '649 Patent"), United States Patent No 5,764,627 ("the '627 Patent"), and United States Patent No. 5,790,532 ("the '532 Patent"), was at issue during the district court's Markman Hearing. 22 The district court issued a single Markman order construing the disputed claims for the two cases. 23 Primarily, the court concluded that Mutli-Tech's claimed inventions were limited to simultaneous voice-data transmission over a direct point-to-point telephone connection and thus did not include trans- mission over a packet-switched network, such as the Intemet.24 The district court, relying on statements made by Multi-Tech to the examiner during prosecution of the '627 patent, concluded that Multi-Tech had excluded transmission through a packet-switched network, such as the Internet. 25 The district court also construed other terms in the claims of the patents at issue, but these constructions were not ultimately relevant 26 to the Federal Circuit's decision. 18. Microsoft, 357 F.3d at 1344 (alleging infringement of U.S. Patent Nos. 5,452,289, 5,600,649, and 5,764,627, as well as U.S. Patent No. 5,471,470). 19.. McCullagh, supra note 14. 20. Microsoft, 357 F.3d at 1344. 21. Id. ("alleging that Microsoft infringed the '289, '470, '649, '627, and '532 patents"). 22. Id. Markman hearings are conducted by the district court to perform claim construction as a matter of law, the first step in an infringement analysis. 23. Microsoft, 357 F.3d at 1344 (citing Microsoft Corp. v. Multi-Tech Sys., Inc., Nos. Civ. 00-1412 ADM/RLE, Civ. 00-1627 ADM/RLE, 2002 WL 1949755 (D. Minn. Aug. 16, 2002) (mem.)). 24. Id. at 1344-45. "A 'circuit-switched network,' such as the Public Switched Telephone Network, is one in which a connection is established from one user to the other such that the users have exclusive and full use of the circuit until the connection is released." Id. at 1345 n.2 (citing HARRY NEWTON, NEWTON'S TELECOM DIC- TIONARY 190-91 (5th ed. 1992)). "In contrast, a 'packet-switched network,' such as the Internet, is one in which data packets are relayed through various stations on a network.
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