In Hoffer v. Microsoft(Fed. Cir. April 22, 2005), the patent owner argued that the "whereby" clause in a method claim for the interactive trade network exemplified above should not limit the claim, pointing out that the Federal Circuit has held that "a whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited." Minton v. Nat'l Ass'n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003). But the Federal Circuit disagreed under the facts of this case:
It is correct that a "whereby" clause generally states the result of the
patented process. However, when the "whereby" clause states a condition that is
material to patentability, it cannot be ignored in order to change the substance
of the invention. . . .
The whereby clause describes a network of users at multiple remote user terminals who are "collectively able to concurrently engage in interactive data messaging." This capability is more than the intended result of a process step; it is part of the process itself.
This interactive element is described in the specification and prosecution history as an integral part of the invention. The "Summary of the Invention" recites that "[f]rom a remote terminal, the user would enter selected topic boards on a Host Terminal System ('Host System') to address messages to, and receive messages from, other intended users." Col. 6, lines 64-67. Thus, the users communicate with each other.
The prosecution history is in accord. Mr. Hoffer points to an amendment during prosecution which made the disclaimer that "newly added [patent claim 21] is an independent method claim . . . that satisfies the Examiner's Statement by solely teaching methods distinct from real-time messaging." However, there is a difference between real-time messaging and interactive messaging, which can occur in real time or asynchronously.
We confirm the district court's construction of the "whereby" clause as requiring interactive data messaging, and that claim 1 is thereby limited to a method that provides interactive date messaging.