CAFC reverses PTAB ruling on online communication patent

The Patent Trial and Appeal Board (PTAB) incorrectly construed the claims in a challenged patent covering online communication, the US Court of Appeals for the Federal Circuit has ruled.

It means licensing company Straight Path IP Group will get a second chance at defending its patent from a challenge at the PTAB by communications company Sipnet EU.

Judge Richard Taranto, writing the opinion, issued on November 25, said the PTAB had incorrectly construed the phrase “is connected to the computer network” in the challenged patent.

US patent number 6,108,704 is titled “Point-to-point internet protocol” and is directed to the exchange of IP addresses between two users. The signal sent by the first device determines whether the second user is online.

Following Sipnet’s challenge of the patent, the PTAB invalidated it on the grounds that it was obvious and anticipated by existing prior art.

The dispute boiled down to whether the phrase “is connected to the computer network” covers real-time connection of the devices.

Both parties agreed that the two communicating users are required to be online, but disagreed over whether the claim covered a present-tense status.

Straight Path argued that the claim included a limitation that a user must be online at the time of receiving a signal request from the first device.

Taranto said: “For the foregoing reasons, ‘is connected to the computer network’ in the ’704 patent’s claims can only reasonably be understood to mean ‘is connected to the computer network at the time that the query is transmitted to the server’.”

He concluded that the “plain meaning of the claim language is therefore not overridden by the specification” and reversed the PTAB’s decision invalidating the patent.

Taranto was joined by Judge Todd Hughes in issuing the opinion.

Judge Timothy Dyk filed a dissenting view. He said the majority “relies on the meaning it assigns to the claim language based on its own knowledge of word usage rather than relying on the patentee’s own specification”.

“The use of the word ‘is’ does not necessarily imply absolute accuracy or absolute currency,” he added.