Words Matter: ‘Said’ or ‘The’ in Claim Refers Back to Initial Phrase, Even If Multiple Elements

Client Alert

In Infernal Technology, LLC v. Activision Blizzard Inc.,1 the U.S. Court of Appeals for the Federal Circuit reaffirmed the long-standing principle that in grammatical terms, use of “said” or “the” in a claim are anaphoric phrases, referring to the initial antecedent phrase, even when the initial phrase refers to one or more elements.

Infernal Technology, LLC, sued Activision Blizzard Inc. for infringement of U.S. Patent Nos. 6,362,822 (’822 patent) and 7,061,488 (’488 patent), accusing 19 Activision video games (Accused Games) of infringement. Both patents, titled “Lighting and Shadowing Methods and Arrangements for Use in Computer Graphic Simulations,” were directed to methods of enhancing how light and shadow are presented in computer graphics.2 Claim 1 of the ’822 patent recited the following:

1. A shadow rendering method for use in a computer system, the method comprising the steps of:

[1(a)] providing observer data of a simulated multidimensional scene;

[1(b)] providing lighting data associated with a plurality of simulated light sources arranged to illuminate said scene, said lighting data including light image data;

[1(c)] for each of said plurality of light sources, comparing at least a portion of said observer data with at least a portion of said lighting data to determine if a modeled point within said scene is illuminated by said light source and storing at least a portion of said light image data associated with said point and said light source in a light accumulation buffer; and then

[1(d)] combining at least a portion of said light accumulation buffer with said observer data; and

[1(e)] displaying resulting image data to a computer screen.3

The parties agreed the term “observer data” meant “data representing at least the color of objects in a simulated multidimensional scene as viewed from an observer’s perspective,” and the district court approved this interpretation.4 Relying on the plain and ordinary meaning of the phrase “said observer data” in step 1(d), which used the district court’s interpretation, Activision filed for summary judgment of noninfringement, which the district court granted.

Infernal appealed, and the Federal Circuit affirmed. Infernal contended that the district court mistakenly awarded summary judgment of noninfringement by misemploying its own interpretation of “observer data” and by determining that the Accused Games could not perform the claimed steps in the claimed arrangement.

Although the parties agreed on appeal on the construction of “observer data,” the parties disagreed whether the term “observer data” could modify or encompass different data sets in steps 1(a), 1(c) and 1(d), where each different data set mapped to a specific step.5 The court held that this claim term could not. Specifically, the phrase “observer data” appears in three steps in claim 1 of the ’822 patent:

(1) “providing observer data” in step 1(a);
(2) “comparing at least a portion of said observer data” in step 1(c); and
(3) “combining ... with said observer data” in step 1(d).6

The court noted that the

parties do not dispute the long-standing principle that “[i]n grammatical terms, the instances of [‘said’] in the claim are anaphoric phrases, referring to the initial antecedent phrase.” … Under this principle, the term “said observer data” recited in steps 1(c) and 1(d) must refer back to the “observer data” recited in step 1(a)—i.e., the “observer data” in step 1(a) is the same “observer data” in steps 1(c) and 1(d). This conclusion holds even though the district court’s construction of “observer data” is open-ended such that it encompasses “at least color data” as well as other types of data.7

The court commented that the later use of definite articles “said” or “the” in a claim to refer to the same claim language provided earlier does not modify the general plural rule of a claim term but merely denotes that non-singular interpretation. The court also reasoned that this interpretation of the observer data was consistent with prior court decisions that held use of the word “said” or “the” refers back to the initial claim phrase, even when the initial phrase encompasses one or more elements. Thus, the court held:

Although the initial “observer data” in step 1(a) includes data that is “at least color data,” the use of the word “said” indicates that each subsequent instance of “said observer data” must refer back to the same “observer data” initially referred to in step 1(a). An open-ended construction of “observer data” (“data representing at least the color of objects”) does not permit each instance of “observer data” in a claim to refer to an independent set of data. Thus, the term “observer data” cannot refer to different data among steps 1(a), 1(c)[] and 1(d).8

Infernal contended, however, that “said observer data” in step 1(d) could relate to a narrower set of data than the same phrase in step 1(a) because both phrases separately satisfied the district court’s interpretation of “observer data.” The Federal Circuit disagreed and explained that Infernal’s argument misapprehended basic claim construction law. In addition, step 1(c) stated “at least a portion of said observer data,” indicating that the patent owner understood how to draft claim language that modified a subset of the “observer data.” According to the court, that “the patentee did not claim a subset of ’observer data’ in step 1(d) indicates that the patentee intended to refer to the same ‘observer data’ in steps 1(a) and 1(d).”9

As a result of interpreting “said observer data” in step 1(d) to refer back to the same “observer data” appearing in step 1(a), the court agreed that Infernal did not show that the Accused Games executed the claim phrase “combining ... with said observer data” in step 1(d). The court observed that Infernal’s infringement theory required different groups of data to be mapped from the Accused Games to the phrase “observer data” throughout the claim. Because it was clear that the mapping of the Accused Games’ “observer data” in step 1(a) was different than the mapping of the “observer data” in step 1(d), the Federal Circuit agreed with the district court that there was no proof provided that the Accused Games infringed the “combining ... with said observer data” claim language in step 1(d). Therefore, Infernal wrongly omitted data that was needed for Infernal’s infringement mapping assertion.

Because Infernal was unable to prove a genuine issue of material fact as to whether the Accused Games infringed the claims, the court affirmed the district court’s grant of summary judgment.

Words matter

Words matter, especially in claims.10 This case is an example where the Federal Circuit invoked a “long-standing” claim interpretation rule that the patent owner broke when trying to prove infringement in court. The result: The patent owner lost in short shrift via summary judgment. That is, the patent owner did not even get their day in court because they had no evidence of infringement based on the claim construction. Thus, in this case, the patent owner found out that the patent covered a different shadow-rendering method than they originally thought they patented.

This decision demonstrates that proper attention must be given to the appropriate scope of patent claims. In addition, a variety of claims should be prepared that provide a variety of inventive features, and claims that range from broad to narrow in scope should also be submitted for maximum benefit and value. As mentioned in previous articles, patent claims define the legal boundary of an invention, much like property boundaries define the legal measurements of land/real property. If you have an incorrect description of your property boundaries, you could end up owning less property than you think. The same applies to patents and inventions—an incorrect description, whether in the specification or claims, can result in an unnecessarily narrow or limited invention.

1 Infernal Technology, LLC v. Activision Blizzard Inc., Civ. App. No. 2021-2349, 2023 USPQ3d 84, 2023 WL 370602 (Fed. Cir. Jan. 24, 2023) (unpublished).

2 Id., slip op. at 2.

3 Id., slip op. at 2–3 (quoting U.S. Patent 6,362,822, col. 12, ll. 4–20 (emphasis added)).

4 Id., slip op. at 4.

5 Id., slip op. at 5.

6 Id., slip op. at 5.

7 Id., slip op. at 5–6 (quoting Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008)).

8 Id., slip op. at 6.

9 Id., slip op. at 7 (emphasis added).

10 See my prior article on words that matter in patent specification: https://www.manatt.com/insights/newsletters/intellectual-property-law/words-matter-specifications-narrow-description-lim. See also my prior article on words that matter for specific claim language, i.e., “main power source”: https://www.manatt.com/insights/newsletters/intellectual-property-law/words-matter-main-power-source-held-to-encompass.

Irah Donner is a partner in Manatt’s Intellectual Property practice and the author of Patent Prosecution: Law, Practice, and Procedure, Eleventh Edition, and Constructing and Deconstructing Patents, Second Edition, both published by Bloomberg Law.



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