Does "A" Still Mean "At Least One" In Open-Ended Claims?
Does "A" Still Mean "At Least One" In Open-Ended Claims?

In Salazar v. AT&T Mobility LLC, the Federal Circuit found that a claim reciting "a microprocesser" that performed several functions was not infringed by a system where the claimed functions were distributed among multiple microprocessors. The Court reasoned that “for a dog owner to have ’a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.”  Salazar v. AT&T Mobility LLC, Nos. 2021-2320, 2021-2376, 2023 U.S. App. LEXIS 8071, at *15 (Fed. Cir. Apr. 5, 2023)

The claim in Salazar recited:

  1. A communications, command, control and sensing system for communicating with a plurality of external devices comprising:

a microprocessor for generating a plurality of control signals used to operate said system, said microprocessor creating a plurality of reprogrammable communication protocols ...,;

a memory device coupled to said microprocessor configured to store a plurality of parameter sets retrieved by said microprocessor  ...;

... said microprocessor generating a communication protocol in response to said user selections ...;

The claim thus recited "a microprocessor" that performed one function, and then referenced "said microprocessor" as performing additional functions.  Based on the general claim construction rule that "a" means "one or more," Salazar had argued that the claim  was met by "one or more" microprocessors that collectively performed the “generating,” “creating,” and “retrieving” functions. However, the Eastern District of Texas Court held that “one microprocessor must satisfy all the functional (and relational) limitations recited for ‘said microprocessor.’” Salazar, at *5. The District Court concluded that the ‘467 patent was not infringed because HTC’s product uses multiple processors, and no single processor is capable of performing all of the claimed functionality recited in Lazar’s patent.

The Federal Circuit affirmed, concluding that “the claim language here requires a singular element—“a microprocessor”—to be capable of performing all of the recited functionality.”  Salazar, at *14.   In reaching this conclusion, the Federal Circuit  acknowledged “that the indefinite article “a” means”’ one or more’ in open-ended claims containing the transitional phrase ‘comprising.”  However, under the Court's holding, the open-ended nature of the claim did not permit the multiple claimed functions of "said microprocessor" to be distributed amongst multiple microprocessors..

For Patent Prosecutors
The unfavorable claim construction for Salazar could have been avoided if the Applicant had (1) acted as their own lexicographer or (2) drafted the claims differently.

Own Lexicographer

A “claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). In such a case, the definition selected by the patent applicant controls. The patentee’s lexicography must, of course, appear “with reasonable clarity, deliberateness, and precision” before it can affect the claim.” Renishaw PLC v. Marposs Societa’ Per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998) Accordingly, had Salazar acted as their own lexicographer and defined the term microprocessor in the specification, the patent would have likely been infringed. For example, Salazar could have included the following in the specification:

As used herein, the term microprocessor means one microprocessor that performs the defined functions or a plurality of microprocessors that collectively perform defined functions such that the execution of the individual defined functions may be divided amongst such microprocessors.

Claim Drafting

Alternatively, Salazar could have explicitly claimed that the claimed functionality could be divided among the one or more processors. For example,  Salazar could have drafted the claims to recite:

one or more microprocessors,
wherein the one or more microprocessors are collectively configured to:
    create...., and

Had Salazar either acted as their own lexicographer or explicitly recited that the claimed functionality was collectively performed by the one or more processors, the resulting patent would likely have been found infringed.

For Patent Owners
Lazar was prohibited by the District Court from alleging that HTC had infringed the claims under the doctrine of equivalents

“The doctrine of equivalents involves a familiar three-part inquiry. An accused device which “performs substantially the same overall function or work, in substantially the same way, to obtain substantially the same overall result as the claimed invention,” Valmont Indus. v. Reinke Mfg. Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993). In the case of HTC’s multiple processor implementation,  all three prongs are likely satisfied. The  HTC’s multiple processors perform the same functions as Lazar’s single processor. The multiple processors operate the same way and collectively generate the same result.

Accordingly, had Lazar been permitted to allege that HTC had infringed the claims of the 5,802,467 patent under the doctrine of equivalents, it is likely that the jury likely would have found claims infringed even under the Court claims construction.

Although, “for a dog owner to have ’a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks,” a patent that covers the dog need not be so constrained. For example, the Owner of the dog could act as their own lexicographer and redefine the meaning of the word “dog” or state that two dogs are the equivalent of one really smart dog.



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