Jonathan A. Platt

Recently the Munich section of Europe’s Unified Patent Court (UPC) issued a decision in an infringement case, Avago Techs. Int’l v. Tesla Germany GmbH, UPC_CFI_52/2023 (August 30, 2024), that serves as a reminder of the importance of choosing conjunctions when drafting patent claims. The opinion was issued in German, though it was interpreting claims written in English, and involved (among other things), interpretation of a claim of the form “at least one of: A, B, and C.” (The actual claim language: “at least one of: a normalized complex signal (140), offset information (142), and transmit property information (144)”.) Is claim language of this form conjunctive or disjunctive?

The money quote from the opinion is as follows:

In der englischen Sprache ist eine Aufzählung von Elementen mit der Formulierung "at least one of: A, B, and C" von einer Aufzählung von Elementen mittels der Formulierung "at least one of: A, B, or C" zu unterscheiden. Die Verwendung des Wortes "and" kann dahingehend verstanden werden, … die damit aufgezählten Elemente kumulativ im Sinne von "at least one of A, and at least one of B, and at least one of C" zu verstehen sind. Hingegen ist bei der Verwendung des Wortes "or" der Sachverhalt jener, dass die aufgezählten Elemente als Alternative im Sinne von „at least one of A, or at least one of B, or at least on of C" aufzufassen sind.

This translates into English as:

In the English language, a list of elements with the wording “at least one of: A, B, and C” must be distinguished from a list of elements with the wording “at least one of: “A, B, or C”. The use of the word “and“ can be understood to mean … that the listed elements must be cumulatively present, in the sense of “at least one of A, and at least one of B, and at least one of C”. In contrast, the use of the word “or” indicates that the listed elements are to be understood as an alternative in the sense of “at least one of A, or at least one of B, or at least one of C”.

Almost certainly the claims drafter meant the language disjunctively (that’s the interpretation that the patentee argued for), but that’s not how it was interpreted in the Munich court. The claim ended up much narrower than it was intended to be.

Much as I am suspicious of a decision written in German that interprets English grammar, this decision accords with how the Federal Circuit would treat this language. The lead U.S. case in this area remains SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004). In SuperGuide the Federal Circuit applied a similar conjunctive interpretation to claim language such as “at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type.” The Federal Circuit reaffirmed this approach as recently as 2021, in SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367 (Fed. Cir. 2021), applying a conjunctive interpretation to the claim language to “a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database,” to require two or more of each of the listed items. (As a side note, that claim language screams out for an Oxford comma. Oxford commas – they’re never wrong, and sometimes necessary to avoid ambiguity.)  

SuperGuide only creates a presumption of a conjunctive interpretation of a list of claim features linked by “and.” That presumption has been rebutted numerous times, such as when there are only two linked items, 3rd Eye Surveillance, LLC v. U.S., 140 Fed. Cl. 39 (2018); when the linked terms are incompatible with one another, such that a conjunctive reading would produce nonsense, Joao v. Sleepy Hollow Bank, 348 F. Supp. 2d 120 (SDNY 2004); when the terms in the list are modes of operation, as opposed to categories with many possible values, Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2015 WL 1265009 (N.D. Cal. Mar 19, 2015) see also HP Co. v. MPHJ Tech. Inv., IPR2013-00309 (PTAB Nov. 21 2013); or when prosecution history of the application clearly supported the disjunctive interpretation, Pinpoint Inc. v. Amazon.com, No. 03 C 4954 (N.D. Ill. Aug. 31, 2004)

There are many approaches to try and make it clear that a disjunctive interpretation is intended. One could use “or” to connect the elements of the list. (But be careful; “or” was treated as an exclusive or (XOR) in Kustom Signals, Inc. v. Applied Concepts, 264 F.3d. 1326 (Fed. Cir. 2001).) Better yet, “and/or” makes clear that a disjunctive interpretation is intended, while still holding out the possibility that multiple of the list features could be included. (In US practice, “and/or” is not indefinite.  See Ex parte Gross, Application 11/565,411 (PTAB Jan. 3, 2014) (in reversing an indefiniteness rejection: “We agree with Appellant that ‘and/or’ covers embodiments having element A alone, element B alone, or elements A and B taken together”).) A further alternative would be to have a clear definition of “at least one of” in the specification of the application as filed. However you do it, make the record clear, preferably in the application as filed.

Patent claims are almost entirely (if not completely) words, and the words chosen matter. At Renner Otto, we know all the best words, and we have been writing patent claims using choice words for over a century. When words matter, be wise in choosing the professional who chooses your words.