United States Court of Appeals
for the Federal Circuit
______________________
USHIP INTELLECTUAL PROPERTIES, LLC,
Plaintiff-Appellant,
v.
UNITED STATES,
Defendant-Appellee,
AND
INTERNATIONAL BUSINESS MACHINES
CORPORATION,
Third Party Defendant-Appellee.
______________________
2012-5077
______________________
Appeal from the United States Court of Federal
Claims in No. 08-CV-537, Judge Susan G. Braden.
______________________
Decided: May 8, 2013
______________________
CHARLES J. COOPER, Cooper & Kirk, PLLC, of Wash-
ington, DC, argued for plaintiff-appellant. With him on
the brief was VINCENT J. COLATRIANO.
2 USHIP INTELLECTUAL PROPERTIES v. US
DAVID M. RUDDY, Trial Attorney, Commercial Litiga-
tion Branch, Civil Division, United States Department of
Justice, of Washington, DC, argued for defendant-
appellee. With him on the brief were STUART F. DELERY,
Acting Assistant Attorney General, JOHN J. FARGO, Direc-
tor, and SCOTT D. BOLDEN, Assistant Director. Of counsel
on the brief was MICHAEL F. KIELY, United States Postal
Service, Law Department, of Washington, DC. Of counsel
was GARY LEE HAUSKEN.
JOHN M. DESMARAIS, Desmarais, LLP, of New York,
New York, argued for third party defendant-appellee. Of
counsel on the brief were STEVEN C. CHERNY, Kirkland &
Ellis LLP, of New York, New York; JOHN C. O’QUINN,
WILLIAM H. BURGESS and JOSEPH F. EDELL, of Washing-
ton, DC.
______________________
Before DYK, BRYSON, and MOORE, Circuit Judges.
MOORE, Circuit Judge.
Uship Intellectual Properties, LLC (Uship) appeals
from the judgment of the Court of Federal Claims (CFC)
that the United States (the government) and IBM Corpo-
ration (IBM) do not infringe certain claims of U.S. Patent
Nos. 5,831,220 (’220 patent) and 6,105,014 (’014 patent).
Uship challenges the CFC’s construction of two disputed
claim terms. Because we agree with the CFC’s construc-
tion of one of the terms, we affirm.
BACKGROUND
The two patents-in-suit are directed to systems and
methods of processing packages for shipment. ’220 pa-
tent, col. 1 ll. 16–22. According to the shared specifica-
tion, the invention fills the need “for a system which
accepts and stores items for subsequent pick-up by a
USHIP INTELLECTUAL PROPERTIES v. US 3
commercial carrier.” Id. col. 2 ll. 2–3. Only claim 1 of the
’220 patent and claim 1 of the ’014 patent are at issue in
this appeal. Both claims recite “[a] method of mailing
parcels and envelopes using an automated shipping
machine” in the preamble. The claims comprise several
similar or identical steps, including “receiving payment
information from a customer”; “receiving package type
information identifying a parcel . . . to be mailed”; “print-
ing a shipping label”; and “validating receipt of said
parcel . . . as the parcel . . . for which said . . . label was
printed.” The parties do not dispute that the preamble is
a claim limitation.
The central issue in this appeal is whether the
claimed “validating” step can be carried out only by an
automated shipping machine, or whether a human being
may perform this step. The CFC held that “only an
automated machine can perform” the validating step.
Uship Intellectual Props., LLC v. United States, 98 Fed.
Cl. 396, 449–50 (2011). 1 As the CFC explained on recon-
sideration, its construction was based on both the specifi-
cation and the prosecution history. See Uship Intellectual
Props., LLC v. United States, 102 Fed. Cl. 326, 330–31
(2011). After the CFC construed the claims, the parties
stipulated to a final judgment of noninfringement. Uship
appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(3).
1 The CFC also construed the term “storing” in ’014
patent claim 1 as “a function to be performed by the
automated shipping machine, not a human.” Uship, 98
Fed. Cl. at 450. Because construction of “validating”
resolves this case, we need not reach the parties’ argu-
ments with regard to “storing.”
4 USHIP INTELLECTUAL PROPERTIES v. US
DISCUSSION
Claim construction is an issue “exclusively within the
province of the court.” Markman v. Westview Instru-
ments, Inc., 517 U.S. 370, 372 (1996). In construing a
claim term, we must look at the term’s “ordinary meaning
in the context of the written description and the prosecu-
tion history.” Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc). “There are only two exceptions
to this general rule: 1) when a patentee sets out a defini-
tion and acts as his own lexicographer, or 2) when the
patentee disavows the full scope of a claim term either in
the specification or during prosecution.” Thorner v. Sony
Computer Entm’t Am., LLC, 669 F.3d 1362, 1365 (Fed.
Cir. 2012).
Uship argues that the plain language of the claims
does not limit performance of the “validating” step to a
machine. It contends that the specification supports
validation by a machine or by a human attendant because
it states that “validation may be accomplished in several
different ways.” ’220 patent, col. 21 ll. 49–50. Uship
argues that, while machine validation is important for
some of the invention’s embodiments, at least one embod-
iment describes a process where a “retail clerk validates
receipt of the package and provides an appropriate receipt
to a customer.” Id. col. 25 ll. 3–5 (emphasis added).
Uship contends that this embodiment establishes that a
human being may carry out the validation step because
the specification says that it is “substantially simplified”
from analogous embodiments with greater machine
involvement. Id. col. 25 l. 47. It argues that this “semi-
attended” embodiment is fully consistent with the claim
language, but the CFC’s construction erroneously exclud-
ed it from the scope of the claims. Id. col. 25 l. 9.
Uship also argues that the CFC wrongly determined
that the prosecution history supports limiting each step of
the claims to performance by a machine. During prosecu-
USHIP INTELLECTUAL PROPERTIES v. US 5
tion of the parent application of the patents-in-suit, the
examiner asserted that the pending method and appa-
ratus claims covered two distinct inventions, and required
the applicant to restrict the invention to either group of
claims. The applicant traversed the restriction require-
ment, arguing that all of the claims were drawn to a
single invention because the method claims “use an
automated shipping machine as set forth in the pream-
ble.” J.A. 3197. The applicant argued that the method
claims “specifically recite in the preamble . . . ‘using an
automated shipping machine’ rather than specifically
reciting at each step that the step is performed by the
automated shipping machine.” Id.
Uship contends that the prosecution history does not
trump the express disclosure of attendant-performed
validation in the specification because a response to a
restriction requirement cannot give rise to prosecution
disclaimer. It further argues that the applicant’s state-
ment regarding the preamble in that response can be
plausibly interpreted to mean that the entire method
cannot be performed by a human being, but that individ-
ual steps may. Uship contends that the applicant had no
need to give up claim scope to overcome the restriction
requirement because the examiner’s objection rested on
the erroneous assumption that the method claims could
be carried out in their entirety without the aid of a ma-
chine. Uship thus contends that the response does not
constitute a clear disavowal of claim scope.
The government and IBM (Appellees) counter that the
language and context of the preamble raise a “strong
presumption” that the preamble requires use of an auto-
mated machine for all of the steps, unless the step explic-
itly states otherwise. Gov. Br. 23. Appellees point out
that, when the applicant wanted to indicate that a human
actor was involved, it explicitly called out “an attendant.”
E.g., ’220 patent, claim 1. They argue that the claim
language, which utilizes words such as “computing” and
6 USHIP INTELLECTUAL PROPERTIES v. US
“printing,” suggests that each of the steps following the
preamble must be performed by the automated shipping
machine. Appellees note that the parties jointly stipulat-
ed that the “automated shipping machine” limitation is
implicit in the “receiving,” “weighing, “computing,” “print-
ing,” and other steps, and assert that it does not make
sense for the “validating” step to depart from this pattern.
Appellees argue that the restriction requirement re-
sponse supports this conclusion because the applicant
stated that the claim recites “using an automated ship-
ping machine” in the preamble to avoid having to “specifi-
cally recit[e] at each step that the step is performed” by
the machine. J.A. 3197 (emphasis added). They contend
that the applicant “told the PTO—and the public—how
the claims should be interpreted: the phrase ‘using an
automated shipping machine’ was put in the preamble to
signify that the automated shipping machine performs
‘each step.’” IBM Br. 52. Appellees note, however, that
the prosecution disclaimer doctrine is not necessary to the
disposition of the case because the applicant’s representa-
tions simply confirm the proper scope of the “validating”
step.
Appellees also contend that the specification provides
no indication that the human attendant confirms that the
package is the one “for which said . . . label was printed,”
as required by the claims. E.g., ’220 patent, claim 1.
They argue that a human attendant cannot successfully
carry out this “very important validation step,” which
ensures that the customer did not switch the package
after printing the label. Id. col. 21 ll. 43–44. Appellees
conclude that the “semi-attended” human-validation
embodiment must therefore be unclaimed. Appellees also
argue that the teachings of an “automated shipping
machine” throughout the specification confirm that the
machine limits the “validating” step.
USHIP INTELLECTUAL PROPERTIES v. US 7
We agree with the Appellees that the “validating” step
is limited to an automated shipping machine. As an
initial matter, however, we do not find persuasive Appel-
lees’ argument that the appearance of the phrase “using
an automated shipping machine” in the preamble raises a
presumption that every step of the claimed method must
be performed by a machine. Our precedents provide no
basis for this presumption. The plain meaning of “using
an automated shipping machine” does not clarify whether
the machine must be used in one, several, or all of the
steps. The question of which steps of the claimed process
must be performed by the machine will be answered by
the claim language, the intrinsic record, and any relevant
extrinsic evidence. See Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc). We hold, however, that
the CFC’s construction, which limits “validating” to being
performed by a machine, is correct because this result is
mandated by the doctrine of prosecution disclaimer.
We find no support for Uship’s proposition that prose-
cution disclaimer applies only when applicants attempt to
overcome a claim rejection. Our cases broadly state that
an applicant’s statements to the PTO characterizing its
invention may give rise to a prosecution disclaimer. See,
e.g., Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc.,
222 F.3d 951, 957 (Fed. Cir. 2000). Indeed, in our prose-
cution disclaimer inquiry, “we examine the entire prose-
cution history.” Seachange Int’l, Inc. v. C-Cor Inc., 413
F.3d 1361, 1372 (Fed. Cir. 2005). Thus, statements giving
rise to a disclaimer may be made in response to a rejec-
tion over the prior art, but they may also take place in
other contexts. For example, an applicant’s remarks
submitted with an Information Disclosure Statement can
be the basis for limiting claim scope. See Ekchian v.
Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997).
We hold that a patent applicant’s response to a restriction
requirement may be used to interpret patent claim terms
or as a source of disclaimer.
8 USHIP INTELLECTUAL PROPERTIES v. US
Having resolved this threshold question, we proceed
to examine whether the applicant’s response to the re-
striction requirement in this case constitutes a clear and
unmistakable disclaimer of claim scope. See Omega
Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir.
2003). We hold that it does. The examiner required
restriction of the method and apparatus claims based on a
belief that the method claims could be carried out entirely
by hand. Instead of arguing that the restriction was
improper because the claims required that the machine
perform at least one of the steps, the applicant stated that
the claims “specifically recite in the preamble a method of
mailing parcels . . . ‘using an automated shipping ma-
chine’ rather than specifically reciting at each step that the
step is performed by the automated shipping machine.”
J.A. 3197 (emphasis added). Thus, the applicant explicit-
ly represented that reciting “using an automated shipping
machine” in the preamble is equivalent to “specifically
reciting” that phrase at each step of the method.
The fact that the applicant may have given up more
than was necessary does not render the disclaimer am-
biguous. The analysis focuses on what the applicant said,
not on whether the representation was necessary or
persuasive: “Regardless of the examiner’s motives, argu-
ments made during prosecution shed light on what the
applicant meant by its various terms.” E.I. du Pont de
Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430,
1438 (Fed. Cir. 1988). In any event, the applicant’s ar-
gument persuaded the examiner, who noted in the ensu-
ing Office Action that the restriction requirement was
overcome. From this exchange, a competitor would rea-
sonably conclude that the applicant clearly and unmis-
takably limited all of the method claim steps to
performance by an automated shipping machine except
where the claim itself expressly requires an attendant.
See Insituform Techs., Inc., v. Cat Contracting, Inc., 99
F.3d 1098, 1107–08 (Fed. Cir. 1996).
USHIP INTELLECTUAL PROPERTIES v. US 9
We conclude that the specification contains at most a
disclosure of a “semi-attended” embodiment where the
confirmatory step performed by a human attendant may
arguably fall within the meaning of “validating receipt of
said parcel . . . as the parcel . . . for which said . . . label
was printed” as recited in the claims. We do not see the
conflict about which Uship complains. Even if the specifi-
cation had disclosed an embodiment where a human
performed the entirety of the validation step, prosecution
disclaimer could result in that embodiment not being
covered by the claims. See, e.g., North Am. Container, Inc.
v. Plastipak Packaging, Inc., 415 F.3d 1335, 1345–46
(Fed. Cir. 2005) (excluding from claim scope certain
embodiments based on prosecution disclaimer).
Because we agree with the CFC’s construction of “val-
idating,” we affirm the CFC’s grant of summary judgment
of noninfringement with respect to the asserted claims.
AFFIRMED