Navigating SuperGuide at the PTAB

Over the past 20 years, the Federal Circuit’s opinion in SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004), which defined the plain and ordinary meaning of the phrase “at least one of” followed by a series of elements separated by “and,” played an important role in decisions on claim construction in courts across the country, as well as the Patent Trial and Appeal Board (PTAB).

Background

In 2004, the Federal Circuit issued its opinion in SuperGuide from an appeal challenging a decision by the U.S. District Court for the Western District of North Carolina that construed certain terms of the asserted patents. The relevant claim language reads as follows:

At issue in SuperGuide was the District Court’s construction of the phrase “at least one of” followed by a list of criteria as meaning “at least one of each desired criterion.” The District Court stressed that this phrase “does not mean one or more of the . . . criteria but at a minimum one category thereof.”

The Federal Circuit affirmed. To interpret the phrase “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 phrased the key question as “what does ‘at least one of’ modify?” The court reasoned that the phrase “at least one of” precedes a series of four categories of criteria and that the term “and” separates the categories of criteria, which connotes a conjunctive list. The court thus concluded that the District Court correctly interpreted this phrase as requiring the user to select at least one value for each category of criteria — i.e., at least one of a desired program start time, at least one of a desired program end time, at least one of a desired program service, and at least one of a desired program type.

The Federal Circuit found the appellant’s arguments that the phrase “at least one of” simply requires one or more of the recited criteria, and not all of the criteria, unavailing. Instead, the court focused on the fact that the patentee chose to use the phrase “at least one of” followed by a series of criteria separated by the term “and,” which connotes a conjunctive, not disjunctive, list. The court contrasted the claim language from an example found in in the common treatise on grammar, in which an article of a preposition must be applied to members of a series — e.g., the phrase “in spring, summer, or winter” is to be interpreted as “in spring, in summer, or in winter.” The court explained that the intrinsic record did not enlarge the scope of the plain meaning of the term at issue, and thus the plain meaning of the term controlled.

The state of the law following SuperGuide

In the two decades since SuperGuide, lower courts and the PTAB generally have declined to interpret this decision as a universal rule of construction for all uses of the phrase “at least one of” or similar phrases followed by “and.” Rather, they have viewed SuperGuide as a narrow decision and have often distinguished it in view of the specifics of claim language and intrinsic record.

Various opinions distinguished SuperGuide on the basis of the meaning of the listed elements that follow the phrase “at least one of.” For example, the court in Fujifilm Corp. v. Motorola Mobility LLC, No. 12-CV-03587-WHO, 2015 WL 1265009 (N.D. Cal. Mar 19, 2015) explained that, unlike the “’at least one of” phrase in SuperGuide, which concerned a list of categories of many possible values that users must choose, the list in the instant case involved modes of operation. The court concluded that the phrase “at least one of” must be understood as “one or more of the following.” The PTAB similarly interpreted SuperGuide in Apple, Inc. v. Evolved Wireless LLC, No. IPR2016-01177, 2017 WL 6543970, at *4 (P.T.A.B. Dec. 20, 2017). The Board there analyzed whether the listed elements that followed “at least one of” in the challenged claims were categories that had multiple values, as in SuperGuide, or in the alternative, individual parameters having only one value. In view of the patent specification and expert testimony, the Board held that the list contained the latter and concluded that the claim language must be read disjunctively. More recent PTAB decisions show that the Board appears to maintain this view. See, e.g., Apple, Inc. v. CPC Patent Tech., No. IPR2022-00602 (Final Written Decision of Sep. 23, 2023, explaining that “Courts have not, however, interpreted SuperGuide as setting forth a per se rule that the use of ‘at least one of’ followed by ‘and’ necessarily connotes a conjunctive list” (citing Fujifilm) and “[i]n particular, courts have found SuperGuide inapplicable when the listed items following ‘at least one of’ are not categories containing many possible values” (citing TQ Delta, LLC v. Comcast Cable Commc’ns, LLC, No. 1:15–CV–00611–RGA, 2016 WL 7013481, at *8 (D. Del. Nov. 30, 2016); Hewlett–Packard Co. v. MPHJ Tech. Invs., LLC, No. IPR2013–00309; Daifuku Co., Ltd. v. Murata Machinery, Ltd., No. IPR2015–00083; and Apple, Inc. v. Evolved Wireless LLC, No. IPR2016-01177)).

Case law further indicates that the conjunctive construction rule of SuperGuide may not always jive with the intrinsic record. For example, the court in Joao v. Sleepy Hollow Bank, 348 F. Supp. 2d 120, 124 (S.D.N.Y. 2004), ruled that the grammatically correct fashion of SuperGuide did not apply because the phrase “at least one of a clearing transaction, a check clearing transaction, an account charging transaction, and a charge-back transaction,” if construed conjunctively, would render the claims utter nonsense in view of the patent specification. The PTAB followed suit in HP Co. v. MPHJ Tech. Inv., LLC, IPR2013-00309, 2013 WL 8563946 (P.T.A.B. Nov. 21, 2013). The Board construed the phrase “at least one” followed by an “and” list of modules and their functions in a disjunctive fashion in view of clear embodiments described in the specification that supported multiple alternative modules and functions.

Finally, some courts drew a distinction from SuperGuide based purely on the number of listed elements. For instance, the Court of Federal Claims in 3rd Eye Surveillance, LLC v. United States, 140 Fed. Cl. 39 (2018) reasoned that SuperGuide applied to a list of items following “at least one of,” suggesting that such “list” meant two or more and not an option of just two items, which was at issue before the court. The court further added that the conjunctive construction would have been unnecessarily restrictive and construed the term “at least one of the additional information and the imaginary data” in the disjunctive form as “one or more additional information, one or more imaginary data, or one or more of both.”

Nevertheless, SuperGuide is still good law. A relatively recent decision by the Federal Circuit in SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367 (Fed. Cir. 2021) re-affirmed the grammatical construction principle announced in SuperGuide and applied it to the phrase “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.” The court interpreted “a plurality” as “at least two” and otherwise applied the rule of SuperGuide requiring two or more of each item in a conjunctive list.

Notes for PTAB practitioners

PTAB practitioners should understand that the Federal Circuit’s opinion in SuperGuide did not set a universal rule of construction for “at least one of” (or a similar phrase) followed by a list of items separated by an “and.” In considering or arguing over claim construction, practitioners should evaluate not only the proper grammatical structure of the phrase in question, but the number of items in the list and the meaning of those items (e.g., whether those items present alternative or incompatible options or modes of operation), as well as the intrinsic evidence, including claims, embodiments, and the prosecution history.