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

______________________ FENNER INVESTMENTS, LTD., Plaintiff

- Appellant

v.

CELLCO PARTNERSHIP ( doing business as Verizon Wireless) , Defendant

- Appellee

______________________

2013

- 1640

______________________ Appeal from the United States District Court for the Eastern District of Texas in No. 11

- CV

- 0348, Judge Leonard Davis.

______________________

Deci ded: February 12, 2015

______________________

J ONATHAN S. F RANKLIN , Norton Rose Fulbright US LLP, Washington, DC, argued for plaintiff

- appellant. Also represented by M ARK E MERY

.

G EOFFREY P. E ATON , Winston & Strawn LLP, Was hington, DC, argued for defendant

- appellee. Also repr esented by K EVIN P AUL A NDERSON , K ARIN A. H ESSLER , Wiley Rein, LLP, Washington, DC; C AREN K HOO , Verizon Corporate Services Group

, Bask ing Ridge, NJ.

______________________FENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 2

Before N EWMAN , S CHALL , and H UGHES , Circuit Judges.

N EWMAN , Circuit Judge.
Fenner Investments, Ltd. appeals from the district court’s grant of summary judgment that Cellco Partne rship, doing business as Verizon Wireless

, does not i nfringe claim 1 of U nited S tates Patent No. 5,561,706 (the ’706 paten t). We affirm the judgment

. B ACKGROUND

T he ’706 patent is directed to personal communication services ( PCS) systems

, whereby users are provided with the ability to access a communications net work from diverse locations. Before the development of PCS sy stems, call servicing and billing were specific to a partic ular communications device at a fixed location

. In PCS system s , telephone service can be identified independent of a telephone unit

, and each user of a particular device has a personal identificati on numbe r by which cal l servi cing and billing are identified with the user

, a nd not with a particular telephone unit. ’706 Patent col. 1 ll. 15

- 45.
The ’706 patent states that “a need has arisen for a system capable of locating and tracking personal ident ification numbers such that billing and connecting proc edures may be accomplished” in order to realize the benefits of uncoupling devices and individual users ope rating in a PCS system. C ol. 1 ll. 43

- 45. The ’706 patent states that existing PCS systems do not address this need because “present telephone communication numbering and addressing systems are geographically oriented since the source telephone and the destination telephone nu mbers are always i n predictable and set locations. ” C ol. 1 ll. 32

- 35 . The ’706 invention seeks to address this problem “by means of a mobile address management system” that “uses multiple location authorities to track the location sFENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 3

of personal identification numbers and multiple billing authorities to maint ain the service s and the billing costs associated with a personal identification number.” Col. 1 ll. 49

- 54. Claim 1, the only asserted claim of the ’706 patent

, states the patented method:

1. A method of providing access to a mobile user in a communications system havi ng a plurality of interconnected radio frequency communication switches for selectively collecting calls to mobile users via radio frequency links, a plurality of bil ling authorities for maintaining service profiles of mobile users and a plurality of locat ion author ities for maintaining current locations of mobile users within the interconnected communication switches, the method comprising: receiving at a radio frequency communication switch a personal identification number from a mobile user; receiving fr om the mobile user at the communic ation switch a billing code identifying one of the plurality of billing authorities maintaining a service profile for the mobile use[r], wherein different ones of the plurality of billing a uthorities may maintain the servi ce profile or a second profile for the mobile user identified by the personal identification number; requesting a service profile of the mobile user from the billing authority identified by the r eceived billing code; storing in memory the service profile recei ved from the billing authority; and providing the mobile user access to the switch. After a claim construction hearing, the district court adopted Verizon’s proposed construction of the termFENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 4

“personal identification numb er,” construing it to mean “a number separate from a billing code (as construed herein), identifying an individual system user, which is associated with the individual and not the device.” The district court construed “billing code” to mean “a code separa te from the personal identification number (as construed herein), identifying a particular billing authority (as construed herein).” Based on th e court’s designated meaning of these terms, the parties stipulated to final judgment of noninfringement

, subject to Fenner’s right to appeal

. D ISCUSSION
We review de novo the ultimate question of the proper construction of patent claims and the evidence intrinsic to the patent. Teva Pharm. USA, Inc. v. Sandoz, Inc. , 135 S. Ct. 831, 841 (2015 ); id. (“[W] hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will revi ew that construction de novo .”). The district court’s determination of subsidiary facts based on extrinsic evidence is reviewed for clear error. Id. at 835, 841. The district court’s definition of “personal identific ation number” i s the issue on this app eal

. Fenner argues that the district court erred by construing “personal identification number” as a number that is associated with the individual user and not with the device. Fenner
argues that the plain meaning of “personal identification number” does not contain or require this limit ed defin ition

, and that the district court erroneously imported this limitation from the specification and erroneously relied o n the prosecution history to support this construction.
The terms used in patent claims are not construed in the abstract, but in the context in which the term was presented and used by the patentee , as it would have been understood by a person of ordinary skill in the field of theFENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 5

invention on reading the patent documents. See Biogen Idec, Inc. v. GlaxoSmithKline LLC , 713 F.3d 1090, 1095 (Fed. Cir. 2013) (“[A] term’s ordinary meaning must be considered in the context of all the intrinsic evidence, including the claims, specification, and prosecution hist ory.”) . Thus

, a c laim receives the meaning it would have to persons in the field of the invention, when read and understood in light of the entire specification and prosec ution history. Phillips v. AWH Corp. , 415 F.3d 1303, 1312

– 1317 (Fed. Cir. 2005) (en banc)

. A ny explanation, elab oration, or qua lification presented by the inventor during patent examination is relevant, for the role of claim constructio n is to “ capture the scope of the actual inve ntion ” that is disclosed, described, and patented. Retract able Techs., Inc. v. Becton, Dickinson & Co. , 653 F.3d 1296, 1305 (Fe d. Cir. 2011)

. Words are symbols, linguistic embodiments of info rmation sought to be communicated

, and, as such, can be imperfect at representing their subject

. The Supreme Court recently observed this challenge to patent claim interpretation, stating in Naut i lus, Inc. v. Biosig Instr uments , Inc. , 134 S. Ct. 2120, 2128

- 29 (2014), that “the definiteness requirement must take into account the inherent limitations of language,” and that clarity is required al though “recognizing tha t absolute precision i s unattainable.” When the disputed words describe tec hnology , t he ters e usage of patent claims often requires “construction” in order to define and establish the legal right. J udicial “construction” of patent claims aims to state th e boundaries of the patented subject matter, not to change th at which was invented.
A. The Written Description The foundation of judicial claim construction is the “written description” in the specification. The patent statute requires that the claims “particularly point [] out and distinctly claim [] the subject matter” that the appl i-FENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 6

cant regards as the invention. 35 U.S.C. §112 (b)

. The district court appropriately consulted the description in the ’706 specif ication “for the purpose of better unde rstanding the meaning of the claim .” White v. Dunbar , 119 U.S. 47, 51 (1886).

The ’706 specification includes block diagrams and flow charts

, typified by Figure 1.

Such drawings are part of the “written description” of the invention. The text of the ’706 patent states: “Referring now to Fig. 1, wherein there is shown a block diagram of the present invention. . . . The personal identification numbers 2 are not associated with any particular co mmunications unit or p hysical location but are associated with individual users. ” ’706 P atent col. 2 ll. 30

- 36. Ver izon argues that this description limits the available scope of claim 1. S ee , e.g. , Verizon Servs. Corp. v. Vonage Hol dings Corp. , 503 F.3d 1295, 1308 (Fed. Cir. 2007) (“[D]escrib[ing] the features of the ‘present invention’ as a whole . . . limits the scope of the invention .”).FENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 7

The patent explains that this system is distinguished from non

- PCS telephonic communications systems whose “billing and system manage ment procedures are associa ted with the telephones present in a household or bus iness” and “billing charges are associated with the telephone and not with the individual making the call.” ’706 P atent col. 1 ll. 16

- 22. Describing the PCS system as centered on the user instead of the device , the patent describes the “PCS concept envision[ing] each telephone user having a personal identification number” and “[b]illing and call servicing are identified with the ind ividual personal identification number s and not with a telephone unit.” C ol. 1 ll. 24

- 30.

The patent points out that the “individualized nature of a PCS system raises several problems,” such as how to “locat[e] and track[] personal identification numbers such that calls can be set up with and billed to the proper user.” C ol. 1 ll. 30

- 31
, 37

- 40. The patent states that its invention “ overcomes” these problems and accomplishes the tracking of location and billing authority through a

user

- centered system in which users have personal ident ificati on number s that are associated with the individual user, but not a particular communications unit or physical location

. C ol. 1 l. 49 ; col. 2 ll. 3 5-37. The district court construed claim 1 as subject to the limitation that the personal identification num ber identif y and associate with the user and not the device

, for claim 1 states that a “personal identification number” is received “from a mobile user” and the “ plurality of billing authorities may maintain the service profile or a second profile for the mobile user identified by the personal identification number.” C ol. 6 ll. 3

- 11.

The patent also describes a “fraud protec tion means” that
uses a check out protocol to determine if a perso nal identification number 2 is active in only one l o-FENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 8

cation. When a personal identification number is found to be active in two non

- adjacent loc ations

. . . the switch node attempting to check out the personal identification number i s sent a fraud
error message.
C ol. 3 ll. 5

- 12. Verizon argues that this control fu rther demonstrates that the ’706 patent is for a user

centered method in which the personal identification number is associated with a user , not a device

- centered method.

B. The Prosecution History
The prosecution history bolsters the district court’s construction that the term “personal identification nu mber” is a number associated with the user, not the device

. See Phillips , 415 F.3d at 1317 (“[L]ike the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent.”)

. During prosecution, the patent examiner rejected Fenner’s claims for obviousness in view of U.S. Patent No. 5,210,787 (“Hayes”). Hayes describes a system in which
contact to a communications system is maintained through a process of “registration.” Hayes col. 1 l. 55 to col. 2 l. 5 ; col. 2 l. 65 to col. 3 l. 10. T he Hayes registration

process involves a mobile device periodically receiv ing a signal from a base station, which signal includes info rmation identifyi ng the base station system, referred to as a “ system identification number” ; t he mobile device responds to the base station signal by sending a “ mobile identification number” and its electronic serial number for registration. Id. col. 1 ll. 57

- 67.

Fenner overcame this rejection by stressing that Hayes i s a device -centered communication system

, in
contrast to Fenner ’s user

- centered design

. Fenner argued that the mobile identification number of Hayes “is equiv alent to a typical wireline telephone number sin ce it mustFENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 9

be assigned to a particular mobile communication switch or home exchange, much like a wireline telephone is.” J.A. 2508. Distinguishing Hayes , Fenner stated that “[t]he present invention, on the other hand, is centered around the mobile user, not the mobile telephone. The

user is identified by a personal code. Furthermore, the mobile user need not be, unlike a mobile telephone, a ssigned to a particular home exchange.” J.A. 2509.
Fenner argues that these purported ly limiting stat em ents he mad e during prosecution do not limit the claims

, arguing that the statements and the limitations discussed
were not the basis for grant of the patent . However, t he interested public has the right to rely on the inventor’s statements made during prosecution

, without attempting to decipher whether the examiner relied on them, or how much weight they were given

. See Microsoft Corp. v. Multi

- Tech Sys., Inc. , 357 F.3d 1340, 1350 (Fed. Cir. 2004) (“[A] patentee’s statements during prosecution, whether relied on by the examiner or not, are relevant to claim interpretation.”); Laitram Corp. v. Morehouse Indus., Inc.

, 143 F.3d 1456, 1462 (Fed. Cir. 1998) (“ The fact that an examiner placed no reliance on an applicant ’ s statement distinguishing prior art does not mean t hat the statement is inconsequential for purposes of claim construction. ”).

As the district court observed, the prosecution history does not show or suggest that Fenner contemplated any alternative to a personal identification number associated with the in dividual and not with the device.

C. Inoperability

Fenner argues that the district court’s claim constru ction of “personal identification number” to mean “assoc iated with the individual and not the device” cannot be correct because it renders the patent ed invention inope rable . Fenner states that only a device (not a person) is capable of transmitting the personal identification nu mber to a radio

- frequency communication switch , and thatFENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 10

“a human being cannot communicate with such a switch except through a compatible radio

- equipped cell phone or other wireless unit.” Appellant Br. 25. The ’706 patent
, col. 6 ll. 3 -4, refers to “receiving at a radio frequency communication switch a personal identifica tion number from a mobile user ,” an activity performed by a device, not by a person

. Fenner argues that the district court’s claim constru ction mean s that “there can never be any association between the personal identification number and the device” and

, thus

, is incorrect. Appellant Br. 28. Howe ver, the distr ict court’s construction requires only that a personal identification number is not permanently assoc iated with a specific communications unit or location. This construction is not flawed.

D. Claim Differentiation
Fenner also argues that the doctrine of claim differe ntiation negates the district court’s construction, for clai m 19 would become redundant or superfluous if claim 18 is construed with the restriction imposed by the district
court

. Claim 18 reads:

In a communications network ha ving a plurality of interconnected communication switches, and in which users are identified by a personal identification code wherever that user is located within the communications network, a method for co mpleting a call from a source to a destination us er comprising: receiving from a source user logged onto a first communication switch a personal identific ation code of a destination user to whom a call is to be routed: determining whether the destination user is cu rrently logged onto the first communicat ion switch; andFENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 11

if the destination user is not logged onto the first communication switch, identifying a location tracking authority a ssigned to the personal identification code of the destination user, requesting from the location tracking author ity an id entity for a destination commun ication switch on which the destination user is currently logged onto, receiving the identity of the destination co mmunication switch at the first communic ation switch, and routing the call to the destination switch.

’706 Patent col. 8 ll. 33

- 55. Claim 19 states: “T he method of claim 18 wherein the personal identification number of the source and the destination user are ind ependent of a particular physical communications unit.” Id. c ol. 8 ll. 5 6-58.

Fenner argues th at since claim 19 is specific to the method where the personal identification number is independent of the device, the doctrine of claim different iation requires that the foundation claims such as claims 1 and 18 are not so limited. Fenner argues that “if the term personal identification number always means that the number is never associated with any device . . . the limit ation in C laim 19 would have been unnecessary.” Appe llant Br. 29. Although claim differe ntiation is a useful analytic tool, it cannot enlarge the meaning of a claim beyond that which is supported by the patent documents , or relieve any claim of limitations imposed by the prosecution history

. See, e.g.

, Retractable Techs. , 653 F.3d at 1305 (“[A]ny presumption created by the doctrine of claim differentiation ‘will be overcome by a contrary constru ction dictated by the written description or prosecution history.’” (quoting Seachange Int’l, Inc. v. C

- COR, Inc.

,FENNER INVESTMENTS , LTD

. v. CELLCO PARTNERSHIP 12

413 F.3d 1361, 1369 (Fed. Cir. 2005))); Toro Co. v. White Consol. Indus., Inc. , 199 F.3d 1295, 1302 (Fed. Cir. 1999) (“ [T]he doctrine of claim differentiation does not serve to broaden claims beyond their meaning in light of the specification, and does no t override clear statements of scope in the specification and the prosecution history.” (citation omitted))

. C ONCLUSION

We discern no error in t he district court’s claim co nstruction

, and affirm the summar y judgment of noni nfringement based thereon

. AFFIRMED