by Dennis Crouch
The Federal Circuit’s decision in Broadcom v. Netflix revolves around the construction of the claim term “drive server” found in Broadcom’s U.S. Patent No. 6,341,375. The decision reaffirms the significance of preferred embodiments in claim construction and their potential to shape the validity of patent claims.
The basic question in the case is whether a “drive server” requires computing capabilities, or is storage capacity enough. Although the plain language of “server” suggests computing capacity, the court agreed with the PTAB that the intrinsic evidence, including the claim language and the specification, supported the broader interpretation. In the IPR, Broadcom was seeking the narrower construction in order to avoid prior art. Under the broader construction, the claims were found invalid as obvious.
The important part of the case serves as a reminder of the power of “preferred embodiment” language within the patent specification. In this case, Qualcomm had included a preferred embodiment of a DVD drive server, also known as a disk library, that contained a number of DVD drives and associated disks. Broadcom admitted that its proposed construction would exclude this preferred embodiment if the disk library contained no additional computer. On appeal, the Federal Circuit quoted Vitrionics in its conclusion that: Claim constructions that exclude a preferred embodiment are “rarely, if ever, correct and would require highly persuasive evidentiary support.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (opinion by Judge Michel). In this case, that evidentiary support was lacking. Invalidity affirmed.
Since Vitrionics, the Federal Circuit has placed additional weight upon intrinsic evidence — something that seemingly should give the recited principle even more power.
Don’t you get the same result by merely disclosing any embodiment of a drive server that lacks computing capabilities? No need to invoke Vitronics to prove that a “drive server” need not include a computer if the spec had merely mentioned one such drive server.
I think “Qualcomm” was supposed to be “Broadcom”—and you don’t want to mix those two up!
Also, how could you not mention the irony of this result happening to Broadcom?
Anybody still writing “preferred embodiment”?
Note that if the preferred embodiment had included a “driver server” with computer capacity then the claim might have survived. There would be less infringers but this is true nearly every time a claim is given a narrower construction.
The best approach when drafting is to understand the prior art first and then avoid describing any embodiment (whether “preferred” or just “another embodiment”) that reads on the prior art.
While some might throw out sarcasm like, “thank you captain obvious,” I will applaud Malcolm for his statement of “best approach.”
Of course, it is a best approach to inform clients to run the best prior art search possible even prior to committing to writing an application, and of course, it is advisable for clients to pay for practitioners to read and evaluate such professional prior art excursions.
Clients though, have final say on what they will pay for, and they have had even mega-corporations refuse such best approach recommendations.
Nope. I know practitioners who no longer even include a Summary of the Invention, and the Abstract is as abstract as it can be.
No, and readily let go of outside patent counsel that does (and there are many).
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