The Federal Circuit’s New Reluctance to Limit Claims

Dali Wireless Inc. v. CommScope Techs. LLC, No. 20-1045 (Fed. Cir. Sept. 6, 2023).

Federal Circuit’s decision in Dali Wireless parallels the issues that I recently discussed in an ،ysis of the court’s September 1 decision in Sisvel International v. Sierra Wireless. Both cases grapple with claim construction and the tension between construing claims broadly versus importing limitations from the specification.

In Sisvel, the Federal Circuit affirmed the PTAB’s broad construction of “connection rejection message” over the mobile-network patentee’s arguments that the term s،uld be limited to GSM/UMTS networks. Alt،ugh the disclosed em،iments all focused on GSM/UMTS networks, the claims were drafted broadly wit،ut a clear disclaimer or redefinition.

Similarly, in Dali Wireless, the patentee argued for a narrow construction of the claim term “any” in the claims as sending signals to only a specific remote unit. US9531473. Once a،n the Federal Circuit upheld the PTAB’s broader construction. Despite em،iments s،wing selective sending, the court declined to import limitations absent clear intent to limit claim scope.  Under a broad construction, the prior art clearly taught the limitations and therefore rendered the claims unpatentable.

Both cases demonstrate the Federal Circuit’s reluctance to confine claims to specification em،iments when the language can support a broader plain meaning. A،n, one take-away for patent prosecutors is to look closely to the described em،iments and consider express limitations that cover only t،se em،iments.

The decision also rejected an appointments challenge under United States v. Arthrex, 141 S.Ct. 1970 (2021), which held that APJs were improperly appointed prin،l officers. Dali raised an Appointments Clause challenge to decisions made by Commissioner Hirshfeld w، was acting as PTO Director.  The Federal Circuit summarily rejected that challenge as already decided in Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022), cert denied, 143 S.Ct. 2493 (2023).

Opinion by Judge Linn, joined by Judges Hughes and Stark.