Friday, April 1, 2011

H-W v. Apple: Read the Claims, Not the Complaint

The characterization of a patent's coverage in a Complaint is not always representative of the final reality of the issued patent.

As I mentioned in an update to my previous post, the complaint in the NDTX H-W v. Apple (+ 31 others) case is a bit loose in its description of the invention covered by the '955 patent.

The complaint:

The ‘955 Patent is generally directed to novel, unique and non-obvious systems and methods of using a multi-convergence device, including phones commonly referred to as “smartphones”, which are able to converge voice and data within a single terminal, and which allow users of such devices via domain specific applications to receive information and offers from merchants and to complete a transaction with one of said merchants without having to generate a voice call.

Setting aside whether smartphones were contemplated or are covered, that leaves out some very important claim limitations that were added by Examiner's amendment after an interview with prosecuting attorney Ruben DeLeon on 9/8/2008.

The actual published method claim, like the other independent claims, is far narrower, with the last amendments shown in bold:

9. A method for performing contextual searches on an Internet Phone (IP) phone comprising the steps of:

  • receiving a command to perform a contextual search;
  • receiving search criteria from a user of said IP phone;
  • submitting said search criteria to a server coupled to said IP phone; and
  • receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in said list;
  • wherein said information received by said user comprises a variety of offers, wherein said user selects one of said variety of offers associated with said one of said merchants listed, wherein said selected offer is transmitted to said one of said merchants listed electronically; and
  • wherein said user's contact and payment information is not transmitted to said one of said merchants listed, wherein said user's contact and payment information is available to said one of said merchants listed.

This is far different than simply completing a transaction without a phone call.

Always read the claims.


Note: The clause "wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call," strangely enough, appears to have been lost in a clerical error in between the Examiner's amendment of prosecution claim 12 and its publication as published claim 9.


Source: 11/082/361 File History and Interview Summary of 08 September 2008.


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