Catch Curve v. Venali v. J2 Global Communications (CAFC 2009-1121) nonprecedential

This is a common case of the patent holder wanting broader coverage than the technologies disclosed or envisioned at the time.

Catch Curve argues that the district court erred by limiting the claims to a specific protocol.

Nothing in the specification suggests that the fax messages of the invention are converted to a different format and transmitted to the recipient over a medium other than a switched telephone network.

Because the SAFFs are computers, not fax machines, Catch Curve contends that the communication between the two SAFFs must be in a digital language. While that may be, the common specification makes it clear that the SAFFs are required to communicate with one another over a switched telephone network.

Venali's accused system starts with an ordinary fax over a telephone network, which is then received and converted into computer geekese: a TIFF image encoded in XML sent via HTTP to a data center for conversion to PDF, whereupon forwarded via SMTP. In other words, the accused system was fecklessly fax.

Venali's accused system operates in a fundamentally different manner. Venali's system converts messages into formats other than fax protocol before storing or forwarding the messages and then transmits the messages to their intended destinations via SMTP, HTTP, or HTTPS protocol over the Internet. The messages are not sent to, and are not retrievable by, a conventional fax machine or a "paperless fax terminal" operating in fax protocol. Thus, all the data storage and transfer functions in Venali's system, after the initial receipt and conversion of the fax message, are inconsistent with fax protocol. In particular, Venali's Internet transmissions are quite different from the claimed transmissions of fax message signals over a switched telephone network. The district court therefore correctly concluded that Venali does not practice the methods or systems that are disclosed in the asserted patents and claimed in the numerous claims originally asserted by Catch Curve.

Claim Curve had tied their claim terms to the spec by claiming a SAFF.

By reciting the use of a SAFF, the storage claims, like the other asserted claims of the patents in suit, are necessarily limited to systems that are capable of sending fax messages through fax protocol over a switched telephone network. See Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1139-40 (Fed. Cir. 2003) (limiting both method and apparatus claims "to conform with the basis on which the invention was presented in the specification").

Claim Curve had hung its hope on claims for storing fax messages.

Catch Curve responds by arguing that inventors are allowed to claim less than their full invention, and that the storage claims should not be construed to require a system capable of delivery of fax messages over the switched telephone network because the storage claims do not include the delivery step. However, merely omitting a step in a described process does not perforce expand the scope of the claim to encompass the use of devices that are nothing like those described in the specification as integral to the invention. See Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) ("[C]laims cannot enlarge what is patented beyond what the inventor has described as the invention."), quoting Networld, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001); see also Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d 1377, 1382 (Fed. Cir. 1999) (limiting the claim term "frame" to character-based protocol, even though "frame," used generally, could also refer to bit-mapped displays, because the specification described and enabled only systems using character-based protocol).

In sum, Claim Curve overreached.

Affirmed.