Kara Technology v. Stamps.com (CAFC 2009-1027, 1028) precedential

A specification of a single embodiment does not necessarily limit claims to that embodiment.

The words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). "[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments." Id. at 1323. "In particular, we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment." Id.

Disputed terms hinged on whether a claimed "preestablished data" required a security key, which had been disclosed, but unstated in the disputed claims.

The claims at issue do not state that the preestablished data contain a key; they state that the data contain "information." Specifically, the plain language of the claims requires that the security indicia be "created in part by information contained in preestablished media data." See, e.g., '179 patent col.12 ll.14-15. This language does not require that the preprinted data contain a key, and certainly not a cryptographic key (as argued by Stamps.com), from which the security indicia would be generated. The preestablished data must, as the claim requires, simply contain information that will be used to create the security indicia--the information will be part of what creates the security indicia.

Moreover, when all of the claims of the '179 and '575 patents are viewed together, it is clear that the claims at issue on appeal do not require a key in the preprinted data. "Differences among claims can . . . be a useful guide in understanding the meaning of particular claim terms." Phillips, 415 F.3d at 1314. Here, when the inventor wanted to restrict the claims to require the use of a key, he did so explicitly. None of the claims at issue on appeal recite the term "key."

To be sure, the specification repeatedly discusses a key embedded in the preestablished data. See, e.g., '179 patent col.2 ll.11-15, col.4 ll.52-59, col.5 ll.57-60, 65-67. In the only detailed embodiments in the patent, the key is embedded in the preestablished data. Id. This is not enough, however, to limit the patentee's clear, broader claims. The claim language read in the context of the specification does not require that a key be contained in the preestablished data, the patentee did not act as his own lexicographer or disavow claim scope. It is the claims that define the metes and bounds of the patentee's invention. See Corning Glass Works v. Sumitomo Elec. U.S.C., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). The claims, not specification embodiments, define the scope of patent protection. The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims. See Phillips, 415 F.3d at 1323.

This part of the case was vacated and remanded.