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

______________________ 

CHARLES J. COOPER, Cooper & Kirk, PLLC, of Washington, DC, argued for plaintiff-appellant. With him on 

the brief was VINCENT J. COLATRIANO. 
2 USHIP INTELLECTUAL PROPERTIES v. US

DAVID M. RUDDY, Trial Attorney, Commercial Litigation Branch, Civil Division, United States Department of 

Justice, of Washington, DC, argued for defendantappellee. With him on the brief were STUART F. DELERY, 

Acting Assistant Attorney General, JOHN J. FARGO, Director, and SCOTT D. BOLDEN, Assistant Director. Of counsel 

on the brief was MICHAEL F. KIELY, United States Postal 

Service, Law Department, of Washington, DC. Of counsel 

was GARY LEE HAUSKEN. 

JOHN M. DESMARAIS, Desmarais, LLP, of New York, 

New York, argued for third party defendant-appellee. Of 

counsel on the brief were STEVEN C. CHERNY, Kirkland & 

Ellis LLP, of New York, New York; JOHN C. O’QUINN, 

WILLIAM H. BURGESS and JOSEPH F. EDELL, of Washington, DC. 

______________________ 

Before DYK, BRYSON, and MOORE, Circuit Judges.

MOORE, Circuit Judge. 

Uship Intellectual Properties, LLC (Uship) appeals 

from the judgment of the Court of Federal Claims (CFC) 

that the United States (the government) and IBM Corporation (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 disputed 

claim terms. Because we agree with the CFC’s construction of one of the terms, we affirm. 

BACKGROUND

The two patents-in-suit are directed to systems and 

methods of processing packages for shipment. ’220 patent, col. 1 ll. 16–22. According to the shared specification, the invention fills the need “for a system which 

accepts and stores items for subsequent pick-up by a 
 USHIP INTELLECTUAL P ROPERTIES v. US 3

commercial carrier.” Id. col. 2 ll. 2–3. Only claim 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 shipping 

machine” in the preamble. The claims comprise several 

similar or identical steps, including “receiving payment 

information from a customer”; “receiving package type 

information identifying a parcel . . . to be mailed”; “printing 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 an 

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. 

Uship Intellectual Props., LLC v. United States, 98 Fed. 

Cl. 396, 449–50 (2011).1 As the CFC explained on reconsideration, its construction was based on both the specification and the prosecution history. See Uship Intellectual 

Props., LLC v. United States, 102 Fed. Cl. 326, 330–31 

(2011). After the CFC construed the claims, the parties 

stipulated to a final judgment of noninfringement. Uship 

appeals. 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 parties’ arguments with regard to “storing.”

 
4 USHIP INTELLECTUAL PROPERTIES v. US

DISCUSSION

Claim construction is an issue “exclusively within the 

province of the court.” Markman v. Westview Instruments, 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 prosecution history.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 

(Fed. Cir. 2005) (en banc). “There are only two exceptions 

to this general rule: 1) when a patentee sets out a definition 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 

different 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 embodiment 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 this embodiment establishes that a 

human being may carry out the validation step because 

the specification says that it is “substantially simplified” 

from analogous embodiments with greater machine 

involvement. Id. col. 25 l. 47. It argues that this “semiattended” embodiment is fully consistent with the claim 

language, but the CFC’s construction erroneously excluded 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 prosecu-
 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 apparatus claims covered two distinct inventions, and required 

the applicant to restrict the invention to either group of 

claims. The applicant traversed the restriction requirement, 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 preamble.” J.A. 3197. The applicant argued that the method 

claims “specifically 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 statement regarding the preamble in that response can be 

plausibly interpreted to mean that the entire method

cannot be performed by a human being, but that individual 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 machine. 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 automated machine for all of the steps, unless the step explicitly states otherwise. Gov. Br. 23. Appellees 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” and 
6 USHIP INTELLECTUAL PROPERTIES v. US

“printing,” suggests that each of the steps following the 

preamble must be performed by the automated shipping 

machine. Appellees note that the parties jointly stipulated that the “automated shipping machine” limitation is 

implicit in the “receiving,” “weighing, “computing,” “printing,” and other steps, and assert that it does not make 

sense for the “validating” step to depart from this pattern. 

Appellees argue that the restriction requirement response supports this conclusion because the applicant

stated that the claim recites “using an automated shipping 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 public—how 

the claims should be interpreted: the phrase ‘using an 

automated shipping machine’ was put in the preamble to 

signify that the automated shipping machine performs 

‘each step.’” IBM Br. 52. Appellees note, however, that 

the prosecution disclaimer doctrine is not necessary to the 

disposition of the case because the applicant’s representations simply confirm the proper scope of the “validating” 

step. 

Appellees also contend that the specification provides 

no indication that the human attendant confirms that the 

package is the one “for which said . . . label was printed,” 

as required by the claims. E.g., ’220 patent, claim 1. 

They argue that a human attendant cannot successfully 

carry out this “very important validation step,” which 

ensures that the customer did not switch the package 

after printing the label. Id. col. 21 ll. 43–44. Appellees 

conclude that the “semi-attended” human-validation 

embodiment must therefore be unclaimed. Appellees also 

argue that the teachings of an “automated shipping 

machine” 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 matter, however, we do not find persuasive Appellees’ argument 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. Our 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 which steps of the claimed process

must be performed by the machine will be answered by 

the claim language, 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 prosecution 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 Int’l, Inc., 

222 F.3d 951, 957 (Fed. Cir. 2000). Indeed, in our prosecution disclaimer inquiry, “we examine the entire prosecution history.” Seachange Int’l, Inc. v. C-Cor Inc., 413 

F.3d 1361, 1372 (Fed. Cir. 2005). Thus, statements giving 

rise to a disclaimer may be made in response to a rejection over the prior art, but they may also take place in 

other contexts. For example, an applicant’s remarks

submitted with an Information Disclosure Statement can 

be the basis for limiting claim scope. See Ekchian v. 

Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997). 

We 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. 
8 USHIP INTELLECTUAL PROPERTIES v. US

Having resolved this threshold question, we proceed 

to examine whether the applicant’s response to the restriction requirement in this case constitutes 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 does. The examiner required 

restriction of the method and apparatus claims based on a 

belief that the method claims could be carried out entirely 

by hand. Instead of arguing that the restriction was

improper because the claims required 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 machine’ rather than specifically reciting at each step that the 

step is performed by the automated shipping machine.” 

J.A. 3197 (emphasis added). Thus, the applicant explicitly represented that reciting “using an automated shipping 

machine” in the preamble is equivalent to “specifically 

reciting” that phrase at each step of the method. 

The fact that the applicant may have given up more 

than was necessary does not render the disclaimer ambiguous. The analysis focuses on what the applicant said, 

not on whether the representation was necessary or 

persuasive: “Regardless of the examiner’s motives, arguments 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 applicant’s argument persuaded the examiner, who noted in the ensuing Office Action that the restriction requirement was 

overcome. From this exchange, a competitor would reasonably conclude that the applicant clearly and unmistakably limited all of the method claim 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 

disclaimer could result in that embodiment not being 

covered by the claims. See, e.g., North Am. Container, Inc. 

v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345–46 

(Fed. Cir. 2005) (excluding from claim scope certain 

embodiments based on prosecution disclaimer). 

Because we agree with the CFC’s construction of “validating,” we affirm the CFC’s grant of summary judgment 

of noninfringement with respect to the asserted claims.

AFFIRMED