“At least one of A and B” is not same as “At least one of A or B”

  • SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004)

Claim 1 of US 5,038,211 recites,

“An online television program schedule system comprising:
first means for storing at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type;”

  • Super Guide’s positions:

On appeal, SuperGuide contends that the claim phrase “at least one of” unambiguously requires the selection and storage of one or more of the four listed criteria (start time, end time, service channel, or type) and does not require storing all four criteria. SuperGuide first argues that the patentee’s use of the term “and,” rather than “or,” was dictated by then-existing United States Patent and Trademark Office (“PTO”) rules and further that it did not have the opportunity to fully develop this point below because of the court’s moratorium on filing papers. As further support, SuperGuide cites to examples in the specification that describe a user who has chosen only two desired programming criteria (e.g., start time and stop time). In addition, SuperGuide contends that the district court erroneously relied on Figure 4a in its analysis because that figure does not cover the asserted claims. SuperGuide lastly emphasizes that during prosecution the patentee repeatedly characterized the invention as requiring the presence of one or more of the four listed criteria and interchangeably used the terms “or” and “and.”

  • DirectTV’s positions:

DirecTV counters that the district court’s construction is supported by the patentee’s use of the conjunctive word “and” and by the grammatical rule requiring that the phrase “at least one of” be applied to each category in the list. Moreover, it disputes SuperGuide’s arguments that the patentee used “and” out of necessity and that it could not introduce relevant evidence on that point. With respect to the specification, DirecTV contends that every disclosed embodiment of a desired criteria list, including Figure 4a, teaches a conjunctive list that is consistent with the plain meaning of the claim language. Responding to SuperGuide’s argument, DirecTV maintains that even though Figure 4a relates to a data structure involving the transmission of data in packet form, claim 1 is written to also cover such a system. DirecTV lastly argues that accepting SuperGuide’s prosecution argument would improperly allow the prosecution history to enlarge the claim scope beyond its ordinary meaning. DirecTV also points out that the ‘211 patentee never explicitly stated that “and” should be interpreted as “or” in the claim language and they did not refute the Examiner’s characterization of the criteria list as being conjunctive.

  • CAFC’s holdings:

We conclude that the plain and ordinary meaning of the disputed language supports the district court’s construction and that the phrase “at least one of” means “one or more.” Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed.Cir.1999). The issue here is what does “at least one of” modify? The criteria listed in the claim at issue consist of four categories (program start time, program end time, program service, and program type). Each category is further comprised of many possible values. SuperGuide contends that the phrase “at least one of” modifies the entire list of categories, i.e., selection and storage of one or more values for one or more of the four listed categories is required. DirecTV, on the other hand, argues that the phrase “at least one of” modifies each category in the criteria list, i.e., one or more values in each category are required.

We agree with DirecTV.

[GRAMMAR] The phrase “at least one of” precedes a series of categories of criteria, and the patentee used the term “and” to separate the categories of criteria, which connotes a conjunctive list. A common treatise on grammar teaches that “an article of a preposition applying to all the members of the series must either be used only before the first term or else be repeated before each term.” William Strunk, Jr. & E.B. White, The Elements of Style 27 (4th ed. 2000). Thus, “[i]n spring, summer, or winter” means “in spring, in summer, or in winter.” Id. Applying this grammatical principle here, the phrase “at least one of” modifies each member of the list, i.e., each category in the list. Therefore, the district court correctly interpreted this phrase as requiring that the user select at least one value for each category; that is, at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type.

[PTO Rule] We are also not persuaded by SuperGuide’s argument that the ‘211 patentee was precluded from using “or” in place of “and” as a result of the PTO rules that were applicable at the time the ‘211 patent application was prosecuted. In support of this argument, SuperGuide refers only to a portion of the Manual of Patent Examining Procedures (“MPEP”), which states:

Alternative expressions such as “brake or locking device” may make a claim indefinite if the limitation covers two different elements. If two equivalent parts are referred to as “rods” or “bars,” the alternative expression may be considered proper.

MPEP § 706.03(d) (1990).

According to SuperGuide, at least some of the criteria referred to in the claims at issue, such as “program start time” and “program type,” are not equivalent in the same sense that a “rod” may be equivalent to a “bar.” SuperGuide’s argument lacks merit for three reasons. First, the cited MPEP rule only states that the given example “may make a claim indefinite,” it does not absolutely preclude such alternative expression. Moreover, the example given is distinguishable from the language the ‘211 patentee could have arguably used here because the modifying phrase “at least one of” does not precede the alternatives in the example. The use of the phrase “at least one of” in the claims at issue provides definiteness that is not present in the example provided in the MPEP rule. Lastly, even assuming arguendo that the patentee drafted the claim at issue in response to the PTO’s instructions on avoiding indefiniteness, we fail to see how this instruction compels us to construe the term “and” as “or.”

[Spec] We further conclude that nothing in the specification rebuts the presumption that the ‘211 patentee intended the plain and ordinary meaning of this language. See Tex. Digital, 308 F.3d at 1204. Every disclosed embodiment teaches that the user must choose a value for each designated category. See, e.g., ‘211 patent, fig. 1. The written description explains that in this embodiment “the [predetermined] selection criteria 17 may include a desired service list 17a, a desired types of programming list 17b, desired times of listings 17c and other criteria 17d.” Id. at col. 4, ll. 23-26. SuperGuide points to another part of the written description, describing the same embodiment, which states the following:

[f]or example, if a user is only at home in the evening he may only wish to view listings from 6 p.m. to 11 p.m. Other criteria 17d may also be selected or provided.

Id. at col. 4, ll. 49-52.

This description, however, does not teach that a value for less than all the designated categories can be chosen. Further, “[o]ther criteria” refers to either another category or another list of categories that require values. In other words, it explains that other categories, besides the ones specified, are possible.

[Drawing] We also conclude that Figure 4a of the ‘211 patent supports the plain and ordinary meaning of the asserted claims. This figure and its corresponding explanation are the only parts of the specification that explain how only certain portions of the transmitted schedule information are stored. The figure consists of a flow chart describing a method for storing portions of the received schedule information according to the chosen criteria. The method compares the received information to determine whether the information “meets” all the criteria chosen by the user. Importantly, the flow chart uses a conjunctive criteria list, i.e., the system’s user must choose at least one value for each designated criteria, or the logic would be inoperable. ‘211 patent, fig. 4a.

SuperGuide argues that Figure 4a is inapplicable to the construction of the disputed language because the figure relates to the processing of received information that has been transmitted in group format whereas the asserted claims do not require such a group format. We disagree. The asserted claims do not require the transmission of schedule information in any particular format. Thus, the asserted claims could cover a system with schedule information that is transmitted in group format. There is also no suggestion in the specification that Figure 4a is applicable only to the transmission format disclosed in the figure. Indeed, the specification states that Figures 4a-4c “are a block diagram illustrating the logic and sequence of operations for storing broadcast TV program information according to the present invention.” Id. at col. 3, ll. 41-44 (emphasis added).

[Prosecution History] Lastly, we decline to enlarge the claim scope from its plain and ordinary meaning based on the prosecution history in this case because the ‘211 patentee did not clearly and explicitly define the term “and” in the covered criteria list as “or.” See N. Telecom, 215 F.3d at 1295 (holding that vagueness and inferences in the prosecution history do not rebut an ordinary meaning of a claim term).

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