大家一起追美剧004 | 如何基于说明书解释权利要求

这是《大家一起追IP美剧》第4期，大岭为大家分享最新的美国联邦上诉法院和最高法院的知识产权判例。

今天分享的是美国联邦上诉法院CAFC于2019年4月1日作出的Nonprecedential判决：

International Business Machines Corporation v. Andrei Iancu, Fed. Cir.  2019

在美国专利无效程序IPR程序中，美国专利审查与上诉委员会PTAB认为IBM的两件美国专利不具备创造性。IBM上诉到美国联邦上诉法院CAFC，CAFC认为PTAB对于权利要求的解释不正确，因此，撤回了PTAB的意见。

以其中的一个权利要求为例：

U.S. Patent No. 7,631,346 , claims 1：

A method for managing user authentication within a distributed data processing system, wherein a first system and a second system interact within a federated computing environment and support single-sign-on operations in order to provide access to protected resources, at least one of the first system and the second system comprising a processor, the method comprising;

……

该权利要求的前序部分涉及一个特征“联合的计算环境”(a federated computing environment)，双方都同意这个特征具有限定作用，而且，应该基于说明书按照最宽合理解释的原则进行解释。但是，本案最有意思是地方是，基于说明书的同一个段落，PTAB与CAFC对上述特征的解释是不同的。

PTAB根据说明书将“联合的计算环境”解释的为单独一家企业内部的两个计算机系统，因而，为对比文件公开。

而CAFC认为PTAB的解释是不合理的，其根据说明书的背景技术，以及PTAB所引用的说明书段落本身，认为根据说明书本身直白的解释，“联合的计算环境”应该是指多个企业的计算机系统，因此， 撤销了CAFC的无效意见。

说明书最关键的段落是：

“[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.”

根据对这一句话的理解，你认为federation应该包括一个enterprise呢？还是包括多个enterprises? 欢迎大家留言讨论。

具体分析见判决，摘录如下：

完整判决书见文末”阅读原文“。

CAFC的所有判决书也可以在以下网址找到：

http://www.cafc.uscourts.gov/opinions-orders

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Before MOORE, TARANTO, and CHEN, Circuit Judges. TARANTO, Circuit Judge.

……

These inter partes reviews of an unexpired patent are subject to the PTO regulation (since changed) providing that the Board should give the claims their broadest reasonable interpretation in light of the specification.

The Board relied for that conclusion entirely on two specification passages and their use of the word “entity.” One passage, from column 10, states that “[i]n the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.” ʼ346 patent, col. 10, lines 62–64. The other passage, from column 8, states that “[t]he terms ‘entity’ or ‘party’ generally refers to an organization, an individual, or a system that operates on behalf of an organization, an individual, or another system.” Id., col. 8, lines 31−33; see J.A. 8.

On those bases, the Board construed “federated computing environment” to mean an environment having a loosely coupled affiliation of entities that adhere to certain standards of interoperability; the federation provides a mechanism for trust among those entities with respect to certain computational operations for the users within the federation.

……

We conclude that the Board’s construction is not reasonable in light of the specification. In the key specification passage quoted above, which is on its face definitional, the patent states that a “federation” is “a loosely coupled affiliation of enterprises.” ’346 patent, col. 1, lines 64–65. That passage demands that the phrase “federated computing environment” be construed to require a plurality of enterprises unless something else in the specification contradicts the passage’s plain meaning. Nothing does.

In fact, the passage is reinforced by two key passages in the specification. The Summary of the Invention states that the invention is addressed to “computing systems of different enterprises that interact within a federal computing environment.” Id., col. 2, lines 54–56 (emphasis added). And the Background of the Invention confirms the point. As discussed above, the Background makes clear that the problem addressed by the patent is to ease user authentications, through single-sign-on techniques, when the resources to which a user seeks access are not within the unitary control of a single enterprise but, instead, are controlled by a plurality of enterprises, who must make cooperative arrangements to establish trust mechanisms to meet the greater challenges of simplifying user access when unitary control is missing. See id., col. 1, line 14 through col. 2, line 48. Being “federated,” these passages make clear, presupposes the absence of the unitary control that a single enterprise could exercise over its own resources.

The two passages that the Board relied on do not reasonably support a contrary claim construction. The column 10 passage states: “In the context of the present invention, a federation is a set of distinct entities, such as enterprises, organizations, institutions, etc., that cooperate to provide a single-sign-on, ease-of-use experience to a user.” Id., col. 10, lines 62–64. At least when understood in light of the specification language already discussed, the column 10 passage is not reasonably read as an open-ended sweeping in of all “entities,” including mere “systems” in the sense of physical equipment. The column 10 passage refers to entities “such as” the ones listed and includes “etc.”—both of which, in this context, indicate that only things of a type similar to the itemized ones are covered, namely, other establishments or ventures or firms or the like. We have recognized that “such as” and “etc.” sometimes have just that meaning. See Archer Daniels Midland Co. v. United States, 561 F.3d 1308, 1313 (Fed. Cir. 2009) (holding that the “rule of ejusdem generis . . . limits the additional [things] included by the general phrase ‘etc.’ to others of the types listed”); United States v. Nichols Copper Co., 29 C.C.P.A. 186, 191 (1941) (holding that “by the use of the words ‘such as’ in the paragraph we are required to determine whether a substance not specifically named in the paragraph is like or similar to, or belongs to the same class as, the substances therein named”). That understanding is the only reasonable one for the passage, given the plain meaning of the definitional and other language we have already discussed. And it is confirmed by the patent’s statement that “[a] federated environment includes federated enterprises or similar entities that provide a variety of services for users.” ’346 patent, col. 15, lines 55–57 (emphasis added).

……

For those reasons, we conclude that a “federated computing environment” requires a plurality of distinct enterprises. In light of that conclusion, we vacate the Board’s final written decision in IPR2016-00608 and remand for the Board to determine in the first instance whether, under the correct claim construction, Sunada anticipates the claims at issue in that IPR.

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