EVERY Word of a Claim Matters - Federal Circuit's Non-Infringement Ruling Hinges on (probably unneeded) Overly Specific Claim Terms

The recent Federal Circuit decision of Nexstep, Inc. v. Comcast Cable Commc'ns, LLC, demonstrates the importance of careful claim drafting and the potential pitfalls of using certain terms in patent claims. ?2024 U.S. App. LEXIS 26867, 2024 U.S.P.Q.2D (BNA) 1869 (Fed. Cir. 2024). ?This case serves as a reminder to patent practitioners to avoid unnecessary words in claims that may limit the scope of protection.

Beware of Industry Standard Terms and Overly Specific Limitations

In NexStep, the court found that the term "VoIP" (Voice over Internet Protocol) of U.S. Patent No. 8,885,802 ("the '802 patent") required two-way communication, but the alleged infringing device was only capable of one-way communication, leading to a finding of non-infringement.? Id. at 11-12. ?Similarly, the court found that the term "single action", as recited in claim 1 of U.S. Patent No. 8,280,009 ("the '009 patent") really meant one action and not a series of related "steps" for completing an action based on a jury verdict of no literal infringement.? Id. at 24-25.? The Federal Circuit's treatment of "VoIP" and "single action" demonstrates the risks of using industry-standard terms and overly specific limitations without careful consideration.

On a side note, the "single action" term in the '009 patent proved problematic for NexStep's assertion of infringement under the doctrine of equivalents, as the Federal Circuit affirmed that there was insufficient evidence that Comcast's multi-step process was equivalent to the claimed "single action." Id. at *24-25.? However, the real key here is that if the claims had been drafted more carefully, NexStep could have avoided the need to rely on the doctrine of equivalents to assert infringement.

Our key takeaway from NexStep: When drafting claims, carefully consider whether the use of specific terms is really necessary to get an application allowed.? If a claim uses industry-standard terms, ensure the terms align with the intended claim scope and/or explicitly define the terms in the specification to avoid being bound by their established industry meaning. ?For specific limitations, consider using broader language that captures the essence of the invention without unnecessarily being limited to a specific implementation. ?This approach can help preserve a broader scope of protection and make it easier to assert infringement, obviating the need for asserting infringement under the doctrine of equivalents.