It Depends On What The Meaning Of "Is" Is. (No, Really, It Does)

Posted Sunday, December 13, 2015.

A former President providing grand jury testimony famously argued, “It depends on what the meaning of the word ‘is’ is.”

The meaning of the word “is” has now also been considered by the U.S. Court of Appeals for the Federal Circuit (“CAFC”). In a patent case involving Straight Path IP Group and Sipnet EU, a three-judge panel of the CAFC issued an opinion November 25, 2015. A takeaway from the opinion is that every single word chosen for use in a patent claim can have a significant consequence, even an innocuous-seeming two-letter word such as “is.”

We can turn to the world of portable devices using wireless communications for an illustration. A device like a cellular phone or a tablet computer, upon being powered up, will search for a wireless access point and register with it. For example, the cell phone may look for a nearby cellular tower. A tablet or laptop might look for a WiFi router (the cell tower or WiFi router being the access point – the point where the device first accesses the network before its network request is retransmitted to a destination).

Before the user of the device requires access to the network (i.e. makes a call or browses the Internet), that registration process occurs. A unique identifier for the device is recognized and stored by the access point during the registration. A table of devices currently registered with the access point is usually maintained. Upon registration, network communication may then ensue.

When viewing a WiFi router in its administration mode, a command to display the contents of the current registration table or a “network map” is often available so one can see a list of devices which have been through the registration process. But how long will a device stay “registered”? If a device goes to sleep (as battery-powered devices commonly do to conserve battery life), are they immediately “un-registered”? Not commonly – a “de-registration” by a WiFi router typically occurs after the device hasn’t connected with the router for some arbitrary period of time - typically hours, or days. This cuts down on network traffic that would be required if devices were un-registered and re-registered each time they entered a power-saving mode.

The scenario above is analogous to the technical environment at issue in Straight Path v. Sipnet. The patent claim included the text “program code for transmitting, to the server, a query as to whether the second process is connected to the computer network.” The foregoing claim text became of “central importance” in the patent case.

Thinking about our exemplary portable device scenario, if the portable device goes to sleep but its registration is maintained by the WiFi router, “is” the portable device connected to the computer network? Adopting that famous grand jury testimony, it depends on what the meaning of the word “is” is. When we say something happens if the portable device is connected to the network, does that mean that the portable device is actually powered-up and downloading content from the Internet?

Let’s say the user powered the portable device up (causing it to register with the access point), checked email and then set the device down to go do something else. After a few minutes the device would likely go to sleep, saving battery life. As discussed above, the access point retains the information about the portable device in its registration table. In that scenario, can we say that the device “is” connected to the network? From the perspective of the WiFi router, we might say yes because the router has no idea that the portable device went to sleep. But looking at it from the powered-down device side, how can we say that it “is” connected to the network if the device’s network connection is unpowered like the rest of the device?

Unfortunately for the patentee in this case, the word “is” was ambiguous enough that an opposing party could cast doubt on its meaning and throw the validity of the patent into question. The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office heard the matter and canceled the claim. The CAFC has sent the case back to the PTAB to reconsider the claim with respect to the meaning of the word “is,” so future legal proceedings lie ahead for the parties while the matter is resolved.

To reiterate, every single word chosen for use in a patent claim can have a significant consequence, even an innocuous-seeming two-letter word such as “is.” What could have been done to avoid the litigation and make the patent less vulnerable/more valuable? For example, the drafter of the patent claim could have attempted to get it issued as “whether the second process is or was connected to the computer network.” Or, perhaps the claim should have read “whether the second process is registered to the computer network” instead of connected. As is evident from the subsequent litigation over the patent that did actually issue, the choice of “is” vs. some other term was incredibly significant in this case. And that’s just a single word of the 150 making up the patent claim.

In short, the manner in which patent claims are written and ultimately issued by the patent office “is” incredibly consequential for the ultimate value of a patent – and I say that with no dependency at all on what the meaning of the word “is” is.

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