HARRIS CORP. v. FED EX CORP. (Fed. Cir. 2013) (NP) – Claim Construction: All or a Subset

Background / Facts: All seven of the asserted patents were directed to a particular technique for accumulating and storing data reflecting aircraft performance while the plane is airborne, and then upon arrival, transmitting that data via spread spectrum signals to the ground for subsequent analysis. FedEx initially designed a similar system for its own aircraft fleet that downloaded all of the flight performance data recorded during flight to the ground computer upon arrival. However, upon being sued, it quickly modified the design “to exclude five minutes of the recorded flight data after the plane landed but before the data was transmitted. This new software option apparently served no functional purpose, and was incorporated solely to ‘design around’ Harris’s patents.”

Issue(s): Whether the claimed “transmitting the accumulated, stored [and] generated aircraft data” requires transmitting all of the data that is “accumulated, stored [and] generated” according to the prior steps rather than simply at least a subset.

Holding(s): Yes. The claim introduces the relevant data set by describing how it is first “generated” during an entire flight and then “accumulated” and “stored” in the ground data link unit between take-off and landing. The claim’s next step, where we encounter the disputed limitation, describes transmitting “the” data using identical language as the previous claim steps. Thus, given the claim’s prior description of generating, accumulating, and storing a particular set of data in the ground data link unit, it is entirely reasonable to interpret “transmitting the accumulated, stored [and] generated aircraft data from the ground data link unit” as referring to that same data set (i.e., in its entirety, and not a subset thereof). “This is especially true where, as here, the later instance refers to ‘the’ data and therefore begs for some antecedent basis.” Accordingly, while the plane is airborne, the ground data link unit may collect and store something less than “all” available data, but once the plane has landed, the claim requires that any and all data accumulated and stored in the ground data link unit must be transmitted to the ground.

Prosecution Takeaways: This is a cautionary tale of how some claims may be easily designed around when the competitor is willing to sacrifice some functionality. Undoubtedly, the drafter here probably thought about the product and how it makes sense to naturally transmit all the data you collect. Why would anyone choose to arbitrarily drop a subset of the collected data before transmission? Answer: to avoid infringing your claim. The point emphasized here is that one should keep in mind not only engineering considerations but also legal ones – will your claimed invention function at all (even if not particularly well) without a certain operation, component, or part thereof? If yes, then it’s probably not essential to include it in the independent claims.

Full Opinion