Straight Path Ip Group, Inc. v. Sipnet Eu S.R.O.
806 F.3d 1356
| Fed. Cir. | 2015Background
- Straight Path owns U.S. Patent No. 6,108,704 for protocols that enable point-to-point real-time communications by having a processing unit register its (temporary) IP and email with a connection server; a caller queries the server to learn whether a callee “is connected” and, if so, receives the callee’s IP address.
- Sipnet petitioned for inter partes review (IPR) challenging claims 1–7 and 32–42 as anticipated/obvious over prior art (notably NetBIOS and WINS); the PTAB instituted and then cancelled those claims.
- Central claim phrase disputed: whether “is connected to the computer network” requires the callee to be connected at the time the query is sent (present/real-time status) or whether it is satisfied by the server’s stored/registered information even if stale.
- The PTAB adopted Sipnet’s broad construction (server registration/record suffices even if not current); Straight Path appealed, arguing the plain present-tense meaning requires current connection status and also raising an unpreserved argument about “process.”
- The Federal Circuit majority reversed the PTAB, holding that “is connected” reasonably means connected at the time of the query and remanded; a concurrence/dissent argued the specification permits a ‘‘relatively current’’ (not absolute) meaning and would uphold the PTAB.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of “is connected to the computer network” | Straight Path: present-tense “is” requires the callee be connected at the time the query is sent (real-time) | Sipnet/PTAB: term satisfied by server’s registered/database status (may reflect registration time, not necessarily current) | Reversed PTAB; held "is connected" means connected at time query is transmitted to server (plain meaning controls) |
| Reliance on specification to override plain claim language | Straight Path: specification does not redefine or disclaim the plain present-tense meaning; prosecution history supports distinction between ‘‘registered/active name’’ and actually being online | Sipnet: specification describes database-based status and allows “relatively current” or registration-based status | Court: specification cannot reasonably override plain claim language here; specification actually distinguishes registration from current status; prosecution history confirms Straight Path’s view |
| Application of claim-construction standard (BRI vs Phillips) | Straight Path: Phillips (patent expired) but court need not decide because construction is wrong even under BRI | Sipnet: PTAB applied broadest-reasonable-interpretation standard | Court: did not decide standard choice; concluded PTAB’s construction was incorrect even under BRI |
| Construction of “process” (claim term) | Straight Path: argued “process” requires distinct construction (e.g., process connectivity different from host device) | Sipnet: no alternative construction argued before PTAB | Court: not preserved before PTAB; refused to address the new “process” construction argument |
Key Cases Cited
- In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015) (standard of review and BRI context in IPRs)
- Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) (consult prosecution history when determining broadest reasonable interpretation)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (specification is primary guide to claim construction; claims read in context)
- Pacing Technologies, LLC v. Garmin Int'l, Inc., 778 F.3d 1021 (Fed. Cir. 2015) (plain claim language limits when specification can change meaning; redefinition/disavowal required to override plain terms)
- Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075 (Fed. Cir. 2009) (‘‘real-time’’ language does not necessarily require absolute instantaneous currency; context matters)