Federal Circuit, November 25, 2015, 2015-1212

Author: Margaret Welsh

In Straight Path IP Group, Inc. v. Sipnet EU S.R.O., the Federal Circuit remanded the Board's claim construction ruling in an IPR proceeding filed by Sipnet EU S.R.O for inter partes review of U.S. Patent No. 6,108,704 which was owned by Straight Path IP Group Inc.

At issue on appeal was the claim construction of the term "is connected to a computer network."  Specifically, claim 1 of the '704 patent recites, that a program code includes "code for transmitting, to the server, a query as to whether the second process is connected to computer network."

Both parties agreed that the term required a query of whether the second process was online. However, Straight Path argued that the term "is" implied a present-tense status, and Sipnet contended that the term required being active and online at the time of registration.

The Federal Circuit disagreed with the Board's claim construction of the term "is" being active and online at the time of registration (i.e. Sipnet's proposed construction).  Rather, the Federal Circuit stated that the term "is" has a clear plain meaning, and "when the claim language has a plain meaning on an issue . . . leaving no genuine uncertainties, . . . it is particularly difficult to conclude that the specification reasonably supports a different meaning."

Further, the Court noted that the claim "plainly states that the query transmitted to the servers seeks to determine whether the second unit is connected at that time."  Thus, "it is not a reasonable interpretation of the claim language, considering its plain meaning, to say that it is satisfied by a query that asks only for registration information, regardless of the its current accuracy."

In view of the above, the Federal Circuit remanded this proceeding.