Issue 141 | December 10, 2003
ACTV v. Disney - Industry Standard Documents Not Instructive in Claim Construction Analysis
 On October 8, the Federal Circuit ruled that Requests for Comment documents published by an industry standards organization could not be relied upon to establish the meaning of claim terms in ACTV, Inc. v. Walt Disney Co., 2003 U.S. App. LEXIS 20498; 2003 WL 22300131 (S.D.N.Y.). While the Court did not foreclose the use of such documents in the future to assist a Court in establishing the meaning of claim terms, parties now have new ammunition to prevent the use of documents and materials that are not per se "dictionaries" or "treatises." The Court decided instead to use other standard Markman analysis claim interpretation tenets to determine that the District Court Judge erred in limiting the meaning of certain claim terms.

ACTV owns three patents related to the synchronization of television information with data from the Internet. ACTV brought suit for infringement against Disney. All of the ACTV patents use the term "uniform resource locator" ("URL"), specifying the location of data on the Internet. However, there are two varieties of URL. The first type of URL is an "absolute" URL, which specifies the abstract location of information without respect to the initial position of the requestor. The second type is a "relative" URL, which specifies the location of information relative to a particular starting position.

The URL term is extremely common; many patents related to the exchange of information over the Internet either use the URL term directly in the claim language, or reference the term in the patent specification. Disney pinned its defense on an argument that the claim term URL must be interpreted as an absolute URL. Disney argued that its ETV system uses only relative URLs to locate information, whereas the ACTV patents only disclose absolute URLs, and therefore the claims require URL to be defined as such. The District Court held for Disney, ruling that the URL term, as used in the claims and defined in the specification of the ACTV patents, did not encompass relative URLs and therefore the Disney system was not within the infringing scope of the patents.

Both ACTV and Disney submitted extrinsic evidence in support of their views of the meaning of the URL term. Both parties relied upon "Request for Comments" ("RFC") documents issued by the World Wide Web Consortium ("W3C"). Both parties acknowledged the W3C as an authoritative, unbiased source. The RFC document produced by the W3C seek to organize a common understanding of Internet technology and protocols among various industry participants, in the hope that a common understanding will lead to the development of a standard.

Although these documents appeared to be unbiased in relation to the lawsuit, and a fair measure of the terminology used in the industry, the Federal Circuit reversed the lower court's decision. In an opinion by Judge Linn, the Court held that the URL term, as used in the ACTV patents, covers both absolute and relative URLs. The Court wrote, "[w]here the written description does not expressly limit the claim term and otherwise supports a broader interpretation, we are constrained to follow the language of the claims, and give the claim term its full breadth or ordinary meaning as understood by persons skilled in the art." Since the ACTV patents lacked an indication of the patentee's clear intent to limit the URL term to absolute URLs, the Court ruled that the URL term, as understood by those skilled in the prior art, therefore may refer to both types of URLs.

In relation to the parties arguments regarding the RFC's, the question presented to the Federal Circuit in ACTV v. Disney was the extent to which reliance would be placed on the RFC documents produced by the two parties. The Court declined to give any weight to the RFCs, holding in sum that Requests for Comments are extrinsic evidence which may not be used, without more, to establish common meaning among those skilled in the prior art. "Because the RFCs were not design to reflect common usage, but rather to assign language to facilitate further conversation, and because of the seeming contradictions between [the two RFCs], we conclude that both documents are extrinsic evidence, and… we decline to rely on them in our claim construction analysis."

The Court explicitly noted that "there is no general prohibition on the use of publications from standards-setting organizations to aid in determining the ordinary and customary meaning of technical terms. Where such a document reflects common usage by those skilled in the relevant art, the document may indeed be an appropriate reference." However, the Court opined that the RFC documents were not reflective of common usage and were instead reflective only of a conversation about future common usage. "Where, as in this case, the documents of the standards-setting organizations do not reflect common usage, but purport to select language to be used in the future, elevation of the Requests for Comments to the same authoritative, unbiased level as dictionaries is improper."

For more information on this subject, please contact the authors of this APLF Update, James P. Muraff (jmuraff@wwrfirm.com), Wallenstein Wagner & Rockey Ltd, Joseph T. Bernstein (JBernstein@wwrfirm.com); Wallenstein Wagner & Rockey, Ltd. Arthur Yuan (ayuan@gmx.net), Student, John Marshall Law School.

James P. Muraff

Joseph T. Bernstein

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