Traditional wooden Pinocchio toy. Italy.

In a recent non-precedential decision, the Federal Circuit suggested a very expansive interpretation for the oft-used phrase “adapted to.” Relying upon the prosecution history, the Federal Circuit determined that the Board correctly construed claims relating to interactive video programming, and on that basis affirmed the Board’s decision that the claims were anticipated by a prior art reference. Intertainer, Inc. v. Hulu, LLC, No. 2015-2065 (Fed. Cir. Sept. 26, 2016) (non-precedential).

In sum, the Board’s constructions correctly capture the positions that [Patent Owner] took during prosecution to obtain allowance. It did not err in construing these terms.

Hulu petitioned the PTAB for covered business method review and cancellation of claims of U.S. Patent No. 8,479,246. The ‘246 Patent relates to creation/distribution of videos having clickable links.  Clicking on a link pauses the video and directs the user to a web page having “ancillary content.”  A further link returns the user to the video playback.

The claims recite a “link program” that manages the interplay between the video and the links. On appeal, the Patent Owner (Intertainer) asserted that the Board had improperly construed this limitation too broadly.  The Patent Owner asserted that the plain reading of the claim required a single “link program” that performed the recited function of both interrupting the video and accessing the linked content. The Patent Owner argued that, properly construed, the “link program” was a “single compilation of instructions” such that the main program, and all sub-routines present at compile-time and accessible to it, were sufficient to accomplish both tasks.

The Federal Circuit noted that the claim and the specification were both silent on whether a single link program was required. The court observed that the claims merely called for a link program “adapted to” perform both functions, but imposed no further limits on how the performance of these two functions was to be programmed.  The specification, according to the Federal Circuit, was equally devoid of restrictions concerning the structure of the link program.

According to the Federal Circuit, “the step of ‘creating a link program’ could involve creating two separate executables that are invoked serially, or a single executable that only need be called once.” The Federal Circuit also noted that the step could encompass the creation of “a single executable with multiple parameters such that the executable can be invoked once with one set of arguments to perform the [interrupting function] and invoked a second time with another set of arguments to perform the [accessing function].”  Indeed, the Federal Circuit went even further, stating that the phrase “adapted to” indicates that the claim requires only that the programming “initiate” these functions, but not that it actually perform these functions itself.

The Federal Circuit relied on the prosecution history to confirm its construction. The court noted that the examiner had initially rejected the claim as lacking written descriptive support, concluding that support for the requirement that the link program be provided over the network was lacking.  According to the examiner, the specification only described delivering a stream of links over the network, as distinct from an entire “link program.”  In overcoming the examiner’s rejection, the Patent Owner successfully argued that such disclosures were sufficient to describe the provision of a “link program.” The court viewed these prosecution arguments as being at odds with the Patent Owner’s contentions that the claimed “link program” was singular and undivided.

The Federal Circuit also pointed to the Patent Owner’s earlier efforts to swear behind a prior art reference. The Patent Owner argued that its demo version of the patented software antedated the reference and established prior conception and reduction to practice.  The examiner initially rejected Patent Owner’s efforts, concluding that the demo delivered only a stream of links, and not an entire link program. Again, overcoming the examiner’s rejection, the Patent Owner successfully argued that the “link program” limitation encompassed this structure.

The Federal Circuit interpreted Patent Owner’s prosecution arguments as a concession that the term “link program” was broad enough to cover any implementation, whether one program or several, as long as the client computer was capable of performing the two functions. The Federal Circuit additionally observed that had the examiner been operating under a construction of “link program” that required a certain programmatic structure, “it is unclear whether [Patent Owner] would have been able to overcome the [written description and prior art] rejections because the specification does not disclose details about how the ‘link program’ is structured,” and the declarations concerning the demo did “not identify a link program that was a single executable.”

The Federal Circuit did not expressly ground its expansive interpretation of “adapted to” upon the broadest reasonable interpretation standard applied in covered business method review proceedings. However, the fact that the construction was offered in that context, and recited in a non-precedential opinion, can give some solace to those who might fear facing such an expansive construction in an infringement suit.