Industry Standards Organization "Requests for Comments" Not As Reliable As Dictionaries And Treatises
Federal Circuit Holds in ACTV v. Disney that Industry Standard Documents Not Instructive in Claim Construction Analysis
By: James P. Muraff, Esq., Wallenstein Wagner & Rockey, Ltd.; Joseph T. Bernstein, Esq., Wallenstein Wagner & Rockey, Ltd.; and Arthur Yuan, Student, John Marshall Law School
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.
Briefly, ACTV owns three patents related to the synchronization of television information with data from the Internet(1) . The patents disclose a system for embedding Internet content within the video blinking interval of an analog video signal. This interval is the short period of time when the electron beam of a television cathode ray tube is finished with creating a particular image on the screen, is turned off and is redirected back to the top of the screen in preparation for the display of the next image. During this interval, the system transmits an identifier known as a uniform resource locator ("URL"), specifying the location of information on the Internet.
ACTV brought suit against Disney, alleging that Disney's Enhanced TV ("ETV") system infringes ACTV's two patents on the synchronization technology. Both patents include the term URL in the claims, but the suit was complicated by the fact that URLs come in two varieties. The first type of URL is an "absolute" URL, which specifies the abstract location of information on the Internet without respect to the initial position of the requestor. For example, "www.aplf.org" is an absolute URL because that is the address of the website without respect to the visitor's location. The second type of URL is a "relative" URL, which specifies the location of information relative to a particular starting point. For example, "/news" is the location of a section of the APLF website, but this address will only be interpreted correctly by a user who is first at the aplg.org root location. Thus, this second type of URL is relative to the position of the user.
The distinction between absolute and relative URLs became important in several respects. First, 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. Second, the distinction was critical in this case because 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(2) , 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. Disney introduced a document known as "Request for Comments 1738" ("RFC I"), which indicates that "a URL has a typical syntax requiring both a protocol type and a resource locator." RFC I distinguishes between "relative links", in which the expression of a source is described "in the same place as this one except with the following relative path," and "general links", in which "an abstract identification of the resource location."(3) In essence, RFC I suggests a commonly-understood difference between absolute and relative URLs and thus supported Disney's contention that its relative links cannot be defined to be included within the definition of absolute links.
On the other hand, ACTV introduced a document known as "Request for Comments 1808" ("RFC II"). This second RFC paper notes that a relative URL "is a shortened form of that for an absolute URL and that a relative URL is a compact representation for the location of a resource."(4) While not entirely at odds with RFC I, the RFC II paper does indicate a more commonly-understood equivalent definition of absolute and relative URLs, and therefore supported ACTVs allegation that Disney infringed its patents.
Both parties offered their RFC sources as authoritative, unbiased sources relating to the meaning of the URL expression, and for good reason: the documents were issued by the World Wide Web Consortium ("W3C"). The W3C is an international industry consortium hosted by the Massachusetts Institute of Technology, the Keio University in Japan, and the Institut National de Recherche en Informatique et an Automatique in France. This organization provides an open forum for companies and organizations that coordinate Internet development worldwide and, in particular, "attempts to set global standards".(5)
To date, the W3C has published more than forty recommendations toward the universality of Internet technology.(6) At the same time, the W3C assists Internet developers around the world in complying with standards. The hosts of the W3C are vendor-neutral and market-neutral, and continue to coordinate with other standards organizations in the industry; for example, the Internet Engineering Task Force ("IETF"). The IETF exists for the sole purpose of drafting, revising, and reviewing Internet Standards(7) . Among the many documents produced by the IETF are some known as "standard track" RFCs. These reports 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. Both of the RFC documents produced in ACTV v. Disney were standard track RFCs produced by the IETF and endorsed by the W3C. The District Court used the RFC I standard track document to construe the claims against ACTV; ACTV appealed.
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." (8) 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 .(9)
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 question was slightly further complicated by the fact that the same industry standards organization had produced two documents which appeared to be at odds. 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 RFC 1738 and RFC 1808, we conclude that both documents are extrinsic evidence, and ... we decline to rely on them in our claim construction analysis." (10)
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." (11) 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." (12)(1) U.S. Patent Nos. 5,774,664; 5,778,181; and, 6,018,768
(2) ACTV, Inc. v. Walt Disney Co., 204 F.Supp.2d 691, 693 (S.D.N.Y. 2002)
(5) About the World Wide Web Consortium (W3C), at http://www.w3c.org/Consortium (last visited Nov. 15, 2003).
(6) See, e.g., Uniform Resource Locators (RFC 1738) at http://www.w3.org/Addressing/rfc1738.txt (T. Berners-Lee et al. eds. Dec. 1994).
(8) ACTV, Inc. v. Walt Disney Co., 2003 U.S. App. LEXIS 20498; 2003 WL 22300131, at *17 (9) Id.