# United States **Court of Appeals**  **for the Federal Circuit**

______________________

USHIP INTELLECTUAL PROPERTIES, LLC, Plaintiff

- Appellant,

v.

UNITED STATES, Defendant

- Appellee,

AND

INTERNATIONAL BUSINESS MACHINES CORPORATION, Third Party Defendant

- Appellee.

______________________

2012

- 5077

______________________

Appeal from the United States Court of Federal
Claims in No. 08

- CV

- 537, Judge Susan G. Braden.

______________________

Decided: May 8, 2013

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C HARLES J. C O OPER , Cooper & Kirk, PLLC, of Was hington, DC, argued for plaintiff

- appellant. With him on
the brief was V INCENT J. C OLATRIANO

.USHIP INTELLECTUAL P ROPERTIES v. US 2

D AVID M. R UDDY , Trial Attorney, Commercial Litig ation Branch, Civil Division, United States Department of Justice, of Washing ton, DC, argued for defendant

appellee. With him on the brief were S TUART F. D ELERY

, Acting Assistant Attorney General, J OHN J. F ARGO , Dire ctor, and S COTT D. B OLDEN , Assistant Director. Of counsel
on the brief was M ICHAEL F. K IELY , United States Postal

S ervice, Law Department, of Washington, DC. Of counsel

was G ARY L EE H AUSKEN

.

J OHN M. D ESMARAIS , Desmarais, LLP, of New York, New York, argued for third party defendant

- appellee. Of

counsel on the brief were S TEVEN C. C HERNY , Kirkland & Ellis LLP, of Ne w York, New York; J OHN C. O’Q UINN

, W ILLIAM H. B URGESS and J OSEPH F. E DELL , of Washin gton, DC.

______________________

Before D YK

, B RYSON

, and M OORE

, Circuit Judges.

M OORE

, Circuit Judge

.

Us hip Intellectual Properties, LLC (Us hip) appeals from the judgment of the Court of Federal Claims (CFC)
that the United States (the government) and IBM Corp oration (IBM) do not infringe certain claims of U.S. Patent Nos. 5,831,220 (’220 patent) and 6,105,014 (’014 patent)

. Uship challenges the CFC’s construction of two d isputed
claim terms . Because we agree with the CFC’s constru ction of one of the terms , we affirm

.
B ACKGROUND

The two patent s- in

- suit are directed to systems and
methods of processing packages for shipment. ’220 p atent, col. 1 ll. 16

– 22. According to the shared specific ation, the invention fills the need “for a system which accepts and stores items for subsequent pick

- up by aUSHIP INTELLECTUAL P ROPERTIES v. US 3

commercial carrier.” Id. col. 2 ll. 2– 3. Only c laim 1 of the ’220 patent and claim 1 of the ’014 patent are at issue in this appeal. Both claims recite “[a] method of mailing parcels and envelopes using an automated ship ping
machine ” in the preamble. The claims comprise s everal
similar or identical steps

, including “ receiving payment
informatio n from a custom er”; “receiving package type information identify ing a parcel . . . to be mailed ”; “prin ting a shipping label” ; and “validating receipt of said parcel . . . as the parcel . . . for which said

. . . label was printed .” The parties do not dispute that the preamble is
a claim limitation.

The central issue in this appeal is whether the
claimed “validating ” step can be carried out only by a n automated shipping machine , or whether a human being may perform this step

. The CFC held that “ only an automated machine can perform ” the validating step.
Us hip Intellectual Props., LLC v. United States , 98 Fed. Cl. 396, 449

– 50 (2011)

. 1 As the CFC explained on reco nsideration, its construction was based on both the specification and the prosecution history. See Us hip Intellectual Props., LLC v. United States , 102 Fed. Cl. 326, 330

– 31 (2011). After the CFC construed the claims, t he parties stipulated to a final judgment of noninfringement. Uship appeal s. We have jurisdiction under 28 U.S.C. § 1295(a)(3).

1 The CFC also construed the term “storing” in ’014 patent claim 1 as “a function to be performed by the automated shipping machine, not a human.” Uship , 98 Fed. Cl. at 450. Because construction of “validating” resolves this case, we need not reach the par ties’ arg uments with regard to “storing.”USHIP INTELLECTUAL P ROPERTIES v. US 4

D ISCUSSION

Claim construction is an issue “exclusively within the province of the court.” Markman v. Westview Instr uments, Inc. , 517 U.S. 370, 372 (1996). In construing a claim term, we must look at the term’s “ordinary meaning
in the context of the written description and the prosec ution history.” Phillips v. AWH Corp. , 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “T here are only two exceptions to this general rule: 1) when a patentee sets out a defin ition and acts as his own lexicographer, or 2) when the
patentee disavows the full scope of a claim term either in the specification or during prosecution. ” Thorner v. Sony Computer Entm’t Am., LLC , 669 F.3d 1362, 1365 (Fed. Cir. 2012).

Uship argues that the plain language of the claims
does not limit performance of the “ validating ” step to a machine. It contends that the specification supports validation by a machine or by a human attendant because
it states that “ validation may be accomplished in several
differ ent ways .” ’220 patent, col. 21 ll. 49

– 50

. Uship argues that, while machine validation is important for some of the invention’s embodiments, at least one embo diment describes a process where a “ retail clerk validates receipt of the package and provides an appropriate receipt
to a customer.” Id. col. 25 ll. 3–5 (emphasis added)

. Uship contends that th is embodiment establishes that a human being may carry out the validation step because the specification say s that it is “ substantially simplified ”
from analogous embodiments with greater machine
involvement

. Id. col. 25 l. 47

. It argues that th is “semi

attended” embodiment is fully consistent with the claim language

, but the CFC’s construction erroneously exclu ded it from the scope of the claims. Id. col. 25 l. 9.

Uship also argues that the CFC wrongly determined
that the prosecution history supports limiting each step of
the claims to performance by a machine. During prosec u-USHIP INTELLECTUAL P ROPERTIES v. US 5

tion of the parent application of the patents

- in

- suit, the examiner asserted that the pending method and app aratus claims covered two distinct inventions, and required the applicant to restrict the invention to either group of claims. The applicant traversed the restriction requir ement, arguing that all of the claims were drawn to a single invention because the method claims “use an automated shipping machine as set forth in the prea mble.” J.A. 3197. The applicant argued that the method claims “sp ecifically recite in the preamble . . . ‘using an automated shipping machine’ rather than specifically reciting at each step that the step is performed by the automated shipping machine.” Id.

Uship contends that the prosecution history does not trump the express disclosure of attendant -performed
validation in the specification because a response to a restriction requirement cannot give rise to prosecution
disclaimer . It further argues that the applicant ’s stat ement regarding the preamble in that response can be plausibly interpreted to mean that the entire method cannot be performed by a human being

, but tha t indivi dual steps may

. Uship contends that the applicant had no need to give up claim scope to overcome the restriction requirement because the examiner’s objection rested on the erroneous assumption that the method claims could
be carried out in their entirety without the aid of a m achine. Uship thus contends that the response does not constitute a clear disavowal of claim scope.

The government and IBM (Appellees) counter that the language and context of the preamble raise a “strong presumption” that the preamble requires use of an aut omated ma chine for all of the steps, unless the step expli citly states otherwise. G ov. Br. 23. A ppellees point out that, when the applicant wanted to indicate that a human actor was involved, it explicitly called out “ an attendant

. ” E.g.

, ’220 patent

, claim 1. They argue that the claim language, which utilizes words such as “computing” andUSHIP INTELLECTUAL P ROPERTIES v. US 6

“printin g, ” suggests that each of the steps following the preamble must be performed by the a utomated shipping
machine. Appellees note that the parties jointly stipula ted that the “automated shipping machine” limitation is implicit in the “receiving,” “weigh ing, “ com puting,” “prin ting ,” and other steps, and assert that it does not make sense for the “validating” step to depart from this pattern.

A ppellees argue that the restriction requirement response supports this conclusion because the applicant
stated that t he claim recites “using an automated shi pping machine” in the preamble to avoid having to “specifically recit [e] at each step that the step is performed” by
the machine. J.A. 3197 (emphasis added)

. They contend
that the applicant “told the PTO

— and the pu blic

— how the claims should be interpreted: the phrase ‘using an automated shipping machine’ was put in the preamble to signify that the autom ated shipping machine performs

‘ each step .’ ” IBM Br. 52

. Appellees note , however, that the prosecution disclaimer doctrin e is not necessary to the disposition of the case because the applicant’s represent ations simply c onfirm the proper scope of the “ validating ”
step.

Appellees also contend that the specification provides
no indicati on that the human attendant confirms that the package is the one “for which said . . . label was printed,” as required by the claim s. E.g.

, ’220 patent, claim 1. They argue that a human attendant cannot successfully
carry out th is “ very im portant validatio n step, ” which
ensures that the customer did not switch the package after printing the label. Id. col. 21 ll. 43 –44

. Appellees

con clude that the “semi

- attended” human

- validation
embodiment must therefore be unclaimed. Appellees also argue that the teachings of an “automated shipping

ma chine” throughout the specification confirm that the machine limits the “validating” step.USHIP INTELLECTUAL P ROPERTIES v. US 7

We agree with the Appellees that the “ validating ” step is limited to an automated shipping machine. As an
initial matte r, however, we do not find persuasive Appe llees’ arg ument that the appearance of the phrase “using an automated shipping machine” in the preamble raises a presumption that every step of the claimed method must be performed by a machine. O ur precedents provide no
basis for this presumption. The plain meaning of “using an automated shipping machine” does not clarify whether the machine must be used in one, several , or all of the
steps. The question of wh ich steps of the claimed process must be performed by the machine will be answered by
the claim lan guage , the intrinsic record , and any relevant
extrinsic evidence

. See Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We hold , however, that the CFC’s construction, which limits “validating” to being performed by a machine, is correct because this result is mandated by the doctrine of prosecution disclaimer.

We find no support for Uship’s proposition that pros ecution disclaimer applies only when applicants attempt to overcome a claim rejection

. Our cases broadly state that

an applicant’s statements to the PTO characterizing its invention may give rise to a prosecution disclaimer. See,

e.g. , Hockerson

- Halberstadt, Inc. v. Avia Group In t’ l, Inc.

, 222 F.3d 951, 957 (Fed. Cir. 2000). Indeed, in our pros ecution disclaimer inquiry, “we examine the entire pros ecution history.” Seachange Int’l, Inc. v. C

- Cor Inc. , 413 F.3d 1361, 1372 (Fed. Cir. 2005). Thus, s tatement s giving
rise to a disclaimer may be made in response to a reje ction over the prior art, but they may also take place in other contexts. For example, an applicant’s remarks
submitted with an I nformation Disclosure Statement can be the basis for limiting claim scope. See Ek chian v. Home Depot, Inc. , 104 F.3d 1299, 1304 (Fed. Cir. 1997)

. W e hold that a patent applicant’s response to a restriction requirement may be used to interpret patent claim terms
or as a source of disclaimer.USHIP INTELLECTUAL P ROPERTIES v. US 8

Having resolved this threshold question, we proceed

to examine whether the applicant’s response to the restriction requirement in this case constitute s a clear and
unmistakable disclaimer of claim scope

. See Omega Eng’g, Inc. v. Raytek Corp. , 334 F.3d 1314, 1326 (Fed. Cir. 2003). We hold that it do es

. T he examiner required restriction of the method and apparatus claims based on a
belief that the method claim s could be carried out entirely by hand. I nstead of arguing that the restriction was improper because the claim s require d that the machine perform at least one of the steps, the applicant stated that
the claims “ specifically recite in the preamble a method of mailing parcels . . . ‘using an automated shipping m achine’ rather than specifically reciting at each step that the

s tep is performed by the automated shipping machine .”
J.A. 3197 (emphasis added)

. Thus , the applicant explici tly represented that reciting “using an automated shipping machine” in the preamble is equivalent to “specifically reciting” that phrase at each s tep of the method.

The fact that the applicant may have given up more than was necessary does not render the disclaimer a mbiguous. T he analysis focus es on what the applicant said, not on whether the representation was necessary or persuasive: “Regardless of the examiner’s motives, arg uments made during prosecution shed light on what the applicant meant by its various terms. ” E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co. , 849 F.2d 1430, 1438 (Fed. Cir. 1988). In any event

, the appli cant’s a rgument persuaded the examiner, who noted in the ens uing Office Action that the restriction requirement was

overcome. From th is exchange , a competitor would re asonably conclude that the applicant clearly and unmi stakably limited all of the method c laim steps to performance by an automated shipping machine except where the claim itself expressly requires an attendant

. See Insituform Techs., Inc., v. Cat Contracting, Inc. , 99 F.3d 1098, 1107

– 08 (Fed. Cir. 1996).USHIP INTELLECTUAL P ROPERTIES v. US 9

We conclude that the specification contains at most a
disclosure of a “semi -attended ” embodiment where the confirmatory step performed by a human attendant may arguably fall within the meaning of “validating receipt of said parcel . . . as the parcel . . . for which said . . . label was printed” as recited in the claims. We do not see the
conflict about which Uship complains. Even if the specification had disclosed an embodiment where a human performed the entirety of the validation step, prosecution
disc laimer could result in that embodiment not being covered by the claims. See, e.g.

, North Am. Container, Inc. v. Plastipak Packa ging, Inc. , 415 F.3d 1335, 1345

– 46 (Fed. Cir. 2005) (excluding from claim scope certain embodiments based on prosecution disclai mer).

Because we agree with the CFC’s construction of “va lidating,” we affirm the CFC’s grant of summary judgment of noninfringement with respect to the asserted claims.

AFFIRMED