06/28/2016

Written By: John Kirkpatrick

Indacon sued Facebook for infringing U.S. Patent No. 6,834,276 (hereinafter the “’276 patent”), directed to “searching, indexing, perusing, and manipulating files in a database … through the insertion of automatically generated hyperlinks.”  Indacon at *2.  Appealing a finding of noninfringement by the district court, Indacon disputed the construction of the claim terms “alias,” “custom link,” “custom linking relationship,” and “link term.”  As no extrinsic evidence was introduced, the Federal Circuit reviewed, de novo, the specification and the prosecution history to determine the correct construction.

01/06/2016

Written By: John Kirkpatrick

Appellant Inphi asserts that U.S. Patent No. 7,532,537 (’537 patent) is invalid because the negative claim limitation “and the chip selects of the first and second number of chip selects are DDR chip selects that are not CAS, RAS, or bank address signals” does not meet the written description requirement of 35 U.S.C. § 112, paragraph 1.  Specifically, Inphi argues that specification fails to provide a reason to exclude the negative limitation.  Santorus, Inc. v. Par Pham., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).  The Court (O’MALLEY, Reyna, Chen) found substantial evidence to affirm the Patent Trial and Appeal Board’s (the Board) determination that the negative claim limitation is supported under §112, paragraph 1.     

09/22/2015

Category: Claim Construction 

Written By: Michael B. Pierorazio

Rotatable Technologies LLC owns Patent No. 6,326,978 for a selectively rotating window on a computer display having a frame and display portion. The issue before the Patent and Trademark Appeals Board was whether some limitations recited in the claims, “computer display window”, “display portion”, “toggling the window between two preselected orientations”, were properly defined within the Specification. The question now before the United States Court of Appeals for the Federal Circuit is whether or not to stand behind the Patent and Trademark Appeals Board’s decision.

03/08/2015
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor   
 
TitleFenner Inv., Ltd. v. Cellco Partnership, No. 2013-1640 (Fed. Cir. Feb. 12, 2015).
IssueThe district court’s definition of “personal identification number” is the issue on this appeal. Fenner argues that the district court erred by construing “personal identification number” as a number that is associated with the individual user and not with the device. Fenner argues that the plain meaning of “personal identification number” does not contain or require this limited definition,
Fenner Inv., Ltd., at *4.
HoldingWe affirm the judgment [since the written description and prosecution history describe the “personal identification number” to be associated with individual users, and the doctrine of claim differentiation may not expand construction beyond that which is taught by the specification].
Id. at *2(text added).
 
 
 
03/04/2015
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitlePacing Tech., LLC v. Garmin Int'l, Inc., No. 2014-1396 (Fed. Cir. Feb. 18, 2015).
IssueOn appeal, the parties dispute whether the asserted claims require the claimed devices to play back the pace information using a tempo, such as the beat of a song or flashes of light. This dispute turns on whether the preamble to claim 25 is limiting and on the construction of a “repetitive motion pacing system” as recited in the preamble.
Pacing Tech., LLC, at *4.
HoldingWe hold that the preamble to claim 25, which reads “[a] repetitive motion pacing system for pacing a user...,” is limiting [because the preamble terms “user” and “repetitive motion pacing system” limit the claims, and the embodiments discussed in the specification disavow an interpretation beyond that which is disclosed].
Id. at *5 (text added).
 
 
 
02/12/2015
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIn re Imes, No. 2014-1206 (Fed. Cir. Jan. 29, 2015).
Issues
[I: “wirelessly”] The central dispute is whether Schuetzle discloses a second wireless communication module. […] The examiner thus construed “wireless” as including communication along the metal contacts of the removable memory card and the computer system when the memory card is inserted into the computer. According to the examiner, the metal contacts are not a wire.
In re Imes, at *2-3.
[II: “streaming”] The examiner found that Knowles discloses the recited communications module operable to wirelessly communicate streaming video to a destination.
Id. at *5.
Holdings
[I: “wirelessly”] We hold that the Board erred in concluding that Schuetzle’s removable memory card 35 discloses the claimed second wireless communication module. […] The metal contacts of a removable memory card do not carry a signal through atmospheric space using electromagnetic or acoustic waves, and thus removable memory card 35 is not a wireless communication module under the broadest reasonable interpretation of that term in view of the specification.
Id. at *4.
[II: “streaming”] Sending a series of e-mails with attached still images is not the same as streaming video. Such a construction is unreasonable as it comports with neither the plain meaning of the term nor the specification. Streaming video is the continuous transmission of video.
Id. at *6.
 
 
 
01/23/2015
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
 
TitleTeva Pharma. USA, Inc. v. Sandoz, Inc., No. 13-854 (Jan. 20, 2015).
IssueToday’s case involves claim construction with “eviden­tiary underpinnings.” See Part III, infra. And, it requires us to determine what standard the Court of Appeals should use when it reviews a trial judge’s resolution of an underlying factual dispute. Should the Court of Appeals review the district court’s factfinding de novo as it would review a question of law? Or, should it review that fact-finding as it would review a trial judge’s factfinding in other cases, namely by taking them as correct “unless clearly erroneous?”
Teva Pharma. USA, Inc., at *1.
HoldingWe hold that the appellate court must apply a “clear error,” not a de novo, standard of review [when reviewing underlying factual disputes of claim construction, but may apply de novo review when reviewing claim construction generally].
Id. at *1-2 (text added).
 
 
12/11/2014
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleWorld Class Tech. Corp. v. Ormco Corp., No. 2013-1679, 2014-1692 (Fed. Cir. Oct. 20, 2014).
IssueThe heart of the parties’ dispute is what constraints claim 1 places on the “support surface” during movement of the movable member (slide). As a complement to that issue, the parties also dispute what role is played by the “ledge” surface that lies on the other side of the wire-holding slot from the support surface.
World Class Tech. Corp., at *4.
Holding[W]e conclude that the specification makes clear that the district court correctly resolved the uncertainties in the claim language, adopting a construction that aligns with the description of the invention [which distinguishes “support surface” from a “ledge” surface, and assigns a unique operation to each term,” such that the two terms are not interchangeable].
Id. at *9 (text added).
 
 
 
11/05/2014
Category: Claim Construction  
 
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleInterval Licensing LLC v. AOL, Inc., No. 2013-1282, -1283, -1284, -1285 (Fed. Cir. Sept. 10, 2013).
Issues
[1] “Because the district court failed to appreciate that the language describing display ‘in an unobtrusive manner that does not distract a user’ is tied to specific type of display described in the specification [of invalidated claims 4–8, 11, 34, and 35 of U.S. Patent 6,034,652 (“the ’652 patent”)],” Interval argues, the district court “improperly divorced its analysis from the context of the written description and incorrectly focused on irrelevant hypotheticals . . . .”
Interval at *13-14 (text added, internal citation removed).
[2a] What is in dispute, and what we must consider in reviewing the construction of “attention manager,” [as recited in claims 15–18 of the ’652 patent] is whether the district court read the embodiments too narrowly and thus improperly limited the scope of the claim term.
Id. at *20 (text added).
[2b] Interval asks us to clarify that “instructions,” in the context of [claims 15–18 of the ’652 patent], “may encompass ‘data’” and “need not be written ‘in a programming language.’”
Id. at *22-23 (text added, internal citation removed).
Holdings
[1] [A] term of degree [such as "unobtrusive manner"] fails to provide sufficient notice of its scope if it depends “on the unpredictable vagaries of any one person’s opinion.” Interval at *13 (text added, internal citation removed). Had the phrase been cast as a definition instead of as an example—if the phrase had been preceded by “i.e.” instead of “e.g.”—then it would help provide the clarity that the specification lacks. [A] person of ordinary skill in the art would not understand the “e.g.”phrase to constitute an exclusive definition of “unobtrusive manner that does not distract a user.”
Id. at *18 (text added).
[2a] [T]he patents’ [lexicographical] description [...] supports a broader reading [than the traditional term]. [...] [However, not all of] Interval’s proposed modification [...] is not taken directly from the cited “lexicography.”
Id. at *21-22 (text added).
[2b] “[I]f ‘data’ is a type of ‘instructions,’ then the phrase ‘instructions and/or data’ would not make sense.” Id. at *23. [...] [W]e have cautioned against relying on dictionary definitions at the expense of a fair reading of the claims, which must be understood in light of the specification. [...] [T]he [dictionary definition] on which the district court relied suggests a broader construction of “instructions” than the court adopted.
Id. at *25 (text added).
 
 
 
10/26/2014
Category: Claim Construction 
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleHill-Rom Serv., Inc. v. Stryker Corp., No. 2013-1450 (Fed. Cir. June 27, 2014).
Issues
[1] Hill-Rom argues that the district court erred by limiting “datalink” to [...] a wired datalink. It argues that “datalink” should be given its plain and ordinary meaning[.] Hill-Rom at *4 (text added). [Similarly,] Hill-Rom argues that the “interface board including a processor” should be given its plain and ordinary meaning[.] Id. at *12 (text added).
[2] The parties also dispute [...] whether the claimed “message validation information” must verify that the message is properly received or received exactly, bit by bit, as sent. Id. at *17 (text added).
[3] [D]uring prosecution of a later, unrelated patent, U.S. Patent No. 8,121,856 [...], the examiner rejected claims as obvious over three references [including] [the Ulrich reference], which has the same specification as the [asserted U.S. Patent No. 5,699,038 (’038 patent)]. [...] In response, Hill-Rom added a limitation that the monitoring device receives a user request for a specific subset of data and that the specific subset of data be transmitted without transmitting the other available data. Hill-Rom argued that adding this limitation overcame the obviousness rejection because this added limitation was not disclosed in the Ulrich reference[.] [The district court, upon its conclusion that judicial estoppel prevented Hill-Rom from any broader construction] construed “bed condition message” as “a message not generated in response to any user request that contains the status of all conditions the bed is capable of monitoring.”
Id. at *19-20 (text added).
Holdings
[1] There are no magic words that must be used, but to deviate from the plain and ordinary meaning of a claim term to one of skill in the art, the patentee must, with some language, indicate a clear intent to do so in the patent.
Hill-Rom Serv., Inc., at *7 (text added).
[2] A construction that would exclude the preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”
Id. at *19 (internal citation removed, text added).
[3a] [W]e are bound by prior panel decisions. [...] [S]tatements made during prosecution of a later, unrelated patent cannot form the basis for judicial estoppel. [...] [3b] For judicial estoppel to apply, a parties’ later position must be clearly inconsistent with the earlier position.
Id. at *22 (text added).
 
 
10/21/2014
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor
 
TitleCardSoft, LLC v. Verifone, Inc., No. 2014-1135 (Fed. Cir. Oct. 17, 2014).
IssueVeriFone appeals the district court’s construction of “virtual machine,” found in all asserted claims. It argues that the district court erred by not requiring the claimed “virtual machine” to include the limitation that the applications it runs are not dependent on any specific underlying operating system or hardware.
CardSoft, LLC, at *5.
Holding[T]he district court’s construction does not reflect the ordinary and customary meaning of “virtual machine” as understood by a person of ordinary skill in the art [to mean an interpreter platform between applications and the underlying hardware or operating system.]
Id. at *5 (text added).
 
 
09/28/2014
Category: Claim Construction 
 
 
 
By: Abby Lin, Contributor 
 
TitleH-W Tech., LC v. Overstock.com, Inc., No. 2014-1054, -1055 (Fed. Cir. July 11, 2014).
Issues:
1) H-W appeals the district court’s construction of the claim terms “user of said phone” and “said user” to mean “a consumer operating the IP Phone.” H-W argues that the correct construction is “a person or thing that uses an IP phone.”
H-W Tech. LC, at *3 (internal citations omitted).
2a) [H-W appeals the summary judgment finding that claim 9, as presented prior to Certificate of Correction] is indefinite] H-W first argues that the district court itself had authority to correct the error in claim 9.
Id. at *5 (text added).
2b) H-W also argues that the district court “failed to factor the certificate of correction in [its] determination that claim 9 of the ‘955 Patent is indefinite and invalid.”
Id. at *8 (text added).
2c) Having concluded that the district court properly did not correct the patent claims itself or apply the certificate of correction to this lawsuit, the question remains whether H-W should be permitted to assert claim 9 uncorrected.
Id. at *9.
3) Finally, H-W appeals the district court’s holding that claim 17 is indefinite and invalid.
Id. at *10.
Holdings:
1) In sum, the only significant evidence that supports H-W’s position is a single, arguably marginally applicable, dictionary definition. The district court’s construction, on the other hand, is supported by the claims themselves, the specification, and the weight of the extrinsic evidence. We thus affirm the district court’s construction of “user of said phone” and “said user” to mean “a consumer operating the IP Phone.”
H-W Tech. LC, at *5.
2a) The parties appear to agree that the PTO’s error is clear on the face of the prosecution history. But this court has already deemed evidence of error in the prosecution history alone insufficient to allow the district court to correct the error. See Grp. One, 407 F.3d at 1303 (“The error here is not evident on the face of the patent. The prosecution history discloses that the missing language was required to be added by the examiner as a condition for issuance, but one cannot discern what language is missing simply by reading the patent. The district court does not have authority to correct the patent in such circumstances.”). In sum, we hold that the district court did not have authority to correct the error in claim 9 and correctly declined to do so.
Id. at *8.
2b) Based on the plain language of the statute, this court has specifically held that “[t]he certificate of correction is only effective for causes of action arising after it was issued.” Sw. Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1294–95 (Fed. Cir. 2000). [Since H-W filed before the Certificate of Correction issued, the District Court did not err.]
Id. at *9 (text added).
2c) When, as here, a claim issues that omits a material limitation, and such omission is not evident on the face of the patent, the patentee cannot assert that claim until it has been corrected by the PTO…. Regardless, the district court was correct to conclude that H-W cannot assert either the original or corrected versions of claim 9 in this lawsuit. The judgment of the district court in favor of Overstock and against H-W is thus correct. Still, in order to clarify that claim 9, as corrected, has not yet been litigated and, thus, has not been held invalid, we strike the portion of the judgment that holds claim 9 invalid.
Id. at *9-10.
3) And, as in those cases [IPXL and In re Katz], it is unclear here when infringement would occur. Claim 17 is thus indefinite. Accordingly, we affirm the district court’s holding that claim 17 is invalid.
Id. at *13.
 
 
09/06/2014
Category: Claim Construction   
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleEpos Tech. Ltd. v. Pegasus Tech. Ltd., No. 13-1330 (Fed. Cir. Sept. 5, 2014).
Issues
[1: "Drawing Implement"] The district court construed “drawing implement” as “a conventional writing utensil that can be used alone or together with the invention.” […] [It] explained that the language of the claims is “exceedingly broad,” but that the remainder of the patent is not “so broad as to contemplate using something like ‘a piece of charcoal.’” […]
Epos Tech. Ltd. at *7 (internal citations omitted, text added).
[2: “Given Time Interval”] The district court construed “given time interval” as “fixed at a few seconds or less.” […] [It] explained that, “while the words of the claims do not limit the time interval, all evidence suggests there must be some upper-bound to the interval contemplated by the patentee.” […]
Id. at *8-9 (internal citation omitted, text added).
[3: "Marking Implement"] The district court construed “marking implement” as “an implement that has a marker tip (and not a pen tip).” […] It determined that, “while the specifications occasionally reference a ‘pen’ and ‘pen tip,’ the totality of the specifications makes clear that the patentee was merely using those terms as synonyms for a dry-erase marker.”
Id. at *11.
[4: “Temporary Attachment”] The district court construed “temporary attachment” as “an element that can be removed from the device’s ‘retrofittable apparatus.’”
Id. at *14.
Holdings
[1: "Drawing Implement"] Although it is true that the specifications recite embodiments including “conventional” writing implements, there is no clear indication in the intrinsic record suggesting that the claims are limited to “conventional” drawing implements [since the claims do not state the term, and the specification lists multiple drawing implements, only one of which is a “conventional” implement].
Id. at *8 (text added).
[2: “Given Time Interval”] Although the word “given” may indicate that a time interval is fixed, specified, or predetermined by an operator or a programmer, the intrinsic evidence does not limit “given time interval” to “fixed at a few seconds or less[,]” [because the patents do not require an upper bound for a period of time, but rather state that the disclosed periods of time as ‘preferable’ and ‘typical.’]
Id. at *9 (text added).
[3: "Marking Implement"] Given […] broad disclosures [which interchangeably refers to a “marking implement” as either a marker or a per], the district court erroneously construed “marking implement” to require a “marker tip” and to exclude implements with a “pen tip.”
Id. at *11 (text added).

[4: “Temporary Attachment”] The district court’s construction is incorrect because it reads out preferred embodiments [and there is no highly persuasive amount of evidentiary support for such an exclusion].
Id. at *14 (text added).

 
08/22/2014
Category: Claim Construction  
 
 
 
By: Roy Rabindranath, Contributor 
 
TitleAugme Tech., Inc. v. Yahoo! Inc. (Fed. Circ. June 20, 2014).
Issue[Whether] the district court's determination [in its summary judgment ruling] that Yahoo!'s accused systems do not infringe the Augme patents either literally or under the doctrine of equivalents [was erroneous].
Augme Tech., at *2 (text added).
Holding[Because the district court correctly concluded that the] plain and ordinary meaning of ["]embedded code["] is code written into the HTML code of the web page [, and not linked to another web page, it properly ruled that Yahoo! 's accused system did not infringe the Augme patent literally or under the doctrine of equivalents].
Id. at *10 (text added). 
 
 
 
08/19/2014
Category: Claim Construction 
 
 
 
By: Abby Lin, Contributor 
 
TitleGemalto S.A. v. HTC Corp., No. 13-1397 (Fed. Cir.June 19, 2014).
Issues
1) [Integrated Circuit Claims Claim Construction:] Gemalto first challenges the district court’s construction of the “memory” limitation in the integrated circuit card claims to require all program memory on a single semiconductor substrate (or chip). Gemalto does not dispute that an integrated circuit card is “a card containing a single semiconductor substrate having a central processing unit and memory,” J.A. 31, but contends that the card should be able to access applications stored in off-chip memory, i.e., memory located on chips other than the chip containing the processor.
Gemalto, at *8 (text added).
2) [Programmable Device Claims Claim Construction:] Gemalto asserts that the term should be construed broadly to mean “a device that can execute a computer program.” Appellant’s Br. 37. Gemalto suggests that its proposed construction reflects the ordinary meaning of “programmable device” to one of skill in the art.
Id. at *13.
3) [Infringement by Doctrine of Equivalents:] Gemalto argues that the accused devices infringe the asserted claims, as construed by the district court, under the doctrine of equivalents… Gemalto contends that the accused devices infringe under the doctrine of equivalents when they temporarily load program instructions from off-chip memory into onchip cache memory before execution.
Id. at *17.
Holding
1) [Integrated Circuit Claims Claim Construction:] The claim language does not support Gemalto’s theory. The claim language requires a “memory” that stores an “application” and a “processor” that is coupled to the memory. ’317 patent col. 19 ll. 42, 43, 64. The specification demonstrates that the entire purpose of the invention was to enable the application to be stored within the memory on the chip of the integrated circuit card…. In short, we agree with the district court that the memory recited in the integrated circuit card claims should be construed as “all program memory,” which means “sufficient memory to run the Java code [i.e., the application and interpreter] in accordance with the patentee’sinvention.”
Id. at *8, 13 (text added).
2) [Programmable Device Claims Claim Construction:] In any event, Gemalto’s central problem is that the limitation is not “programmable device” but “memory.” The meaning of terms appearing in the ’727 patent must be construed in light of the same terms recited in the ’317 patent. All three asserted patents are directly related … Statements made by the applicant concerning the “memory” limitation in the ’317 patent’s claims therefore apply with equal force to the “memory” limitation in the ’727 patent’s claims with the same limitation.
Id. at *14 (text added).
We thus agree with the district court that the programmable device of claim 3 of the ’727 patent should be construed as “a single semiconductor substrate integrating electronic circuit components that includes a central processing unit and all program memory making it suitable for use as an embedded system.” J.A. 33.
Id. at *16-17 (text added).
3) [Doctrine of Equivalents.:] Establishing infringement under the doctrine of equivalents requires particularized testimony and linking argument as the equivalence between the claim limitation and the alleged equivalent. Texas Instruments, 90 F.3d at 1567. Such testimony is missing here.
Id. at *19 (text added).
Gemalto provided no testimony asserting that the difference in functionality between cache memory and permanent memory is in fact insubstantial… Absent any testimony suggesting that cache memory is equivalent to permanent memory, no reasonable fact finder could find that the two types of memory function in substantially the same way to achieve substantially similar results
Id. at *19-20 (text added).
 
 
 
08/15/2014
Category: Claim Construction   
 
 
 
 
By: Christian Hannon, Contributor 
 
TitleRotatable Tech. v. Motorola Mobility, No. 2014-1042 (Fed. Cir. June 27, 2014)(non-precedential).
IssueRotatable appeals, among other things, that the preamble term “selectively rotating” is not a claim limitation and that, if the term is a claim limitation, the distrcit court erred in its construction of the term.
Rotatable Tech. at *4.
HoldingBecause the intrinsic record emphasizes the importance of “selectively rotating” and because the prosecution history shows that the patentee relied on the term “selectively rotating” to distinguish the claimed invention from prior art, the district court correctly determined that “selectively rotating” is a claim limitation.
Id. at *2.
 
 
 
08/04/2014
Category: Claim Construction  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
Title Amdocs, Ltd. v. Openet Telecom, Inc., No. 2013-1212 (Fed. Cir. Aug. 1, 2014).
Issues
[1] [A]ll asserted claims of the ’065 Patent require the use of accounting information to “enhance” a network accounting record. The district court construed “enhance” to mean “to apply a number of field enhancements in a distributed fashion.” […] [2] Third, common to all asserted ’797 Patent claims is the limitation of “single record represent[ing] each of the plurality of services.” The district court construed the term to mean “one record that includes customer usage data for each of the plurality of services used by the customer on the network,” with the understanding that the term does not encompass a record that aggregates usage data. […]
Amdocs, Ltd., *17-18 (text added, internal citations omitted).
[3] Based upon its decision that enhancement occurs “in a distributed fashion” and “close to the source” of the network account information, the district court determined that there was “no evidence” of infringement and granted summary judgment in Openet’s favor.
Id. at *23.
Holdings
[1] The district court properly concluded that the embodiments define the outer limits of the claim term and did not err in reading the “in a distributed fashion” and the “close to the source” of network information requirements into the term “enhance.” We therefore affirm the district court’s construction of “enhance” as “to apply a number of field enhancements in a distributed fashion.”
Id. at *21.
[2] Because the specification shows that the separate record can represent a plurality of records by aggregation, the ordinary artisan would also understand that a separate record can represent a plurality of services by aggregation. Accordingly, we vacate the district court’s construction of “single record represent[ing] each of the plurality of services” and substitute it with a plain mean- ing interpretation.
Id. at *23.
[3] We hold that Amdocs’ documentary evidence describing the structure and operation of the accused products creates genuine factual issues regarding whether the products enhance “in a distributed fashion” “close to the source” of the network information.
Id. at *23.
 
 
 
07/31/2014
 
 
 
 By: Roy Rabindranath, Contributor
 
TitleBraintree Lab., Inc. v. Novel Lab., Inc. (Fed. Circ. April 22, 2014).
Issues
[1] [Whether the district court erred in construing the limitations of U.S. Patent 6,946,149 (a)] "purgation" to mean "an evacuation of a copious amount of stool from the bowels after oral administration of the solution [....and (b)] "clinically significant electrolyte shifts" to require "alterations in blood chemistry that are outside the normal upper or lower limits of their normal range and other untoward effects.
Braintree Lab., at *5, 8 (text added, internal citations omitted).
[2] [Whether] the district court's grant of summary judgment of infringement [, based on the above claim construction, in favor of Braintree was erroneous].
Id. at *12 (text added).
[3] [Whether] the district court [erred in finding] that [the] Hechtor [reference] does not anticipate the asserted claims of the '149 patent....[and] in finding that Novel failed to demonstrate that the asserted claims of the '149 patent would have been obvious at the time of the invention.
Id. at *14, 16 (text added).
Holdings
[1(a)] In construing claim terms, the analytical focus must begin and remain centered on the language of the claims themselves, for it is that language that the patentee chose to use to "particularly point out and distinctly claim the subject matter which the patentee regards as his invention." The asserted claims here only require that the compositions "induce" (i.e., bring about or start) diarrhea. The claims do not contain language that requires achieving a fully cleansed colon for a colonoscopy. Thus, while cleansing the goal specifically articulated in the composition, it is not a claim requirement.
Braintree Lab., at *6-7 (text added, internal citations omitted).
[1(b)] Under our precedent, the patentee's lexicography must govern the claim construction analysis. We reverse the district court's claim construction and construe "clinically significant electrolyte shifts" to be "alterations in blood chemistry that are outside the normal upper or lower limits of their normal range or other untoward effects.
Id. at *9 (text added, internal citations omitted).
[2] [We] conclude that there remains a genuine dispute as to whether SUPREP avoids producing any clinically signficant electrolyte shifts in a patient populuation. We vacate the district court's grant of summary judgment of infringement, and we remand this matter to the district court for further factual findings concerning whether such alterations qualify as "clinically significant electrolyte shifts" in accordance with the proper claim construciton articulated here within.
Id. at *12 (text added).
[3] "Novel 'did not show proof that met the clear and convincing standard' that the asserted claims were ancticipated by the Hechter [reference]." Id. at *13 (text added, internal citations omitted). "[Moreover, as] the district court correctly noted, Novel did not prove that one of skill in the art would have been motiviated to combine [16] references. In other words, it failed to prove a 'plausible rationale as to why the prior art references would have worked together.'" Id. at *15-16 (text added).   

 
07/15/2014
Category: Claim Construction  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleGolden Bridge Tech., Inc. v. Apple Inc., No. 2013-1496 (Fed. Cir. July 14, 2014).
Issues
[1: Claim Construction] GBT disputes the portion of the district court’s construction requiring that the preamble be spread prior to transmission. It argues that […] It argues that its submission of its stipulated construction to the PTO in an IDS does not constitute a disclaimer of the broader claim scope.
Golden Bridge Tech., Inc. at *6.
[2: Waiver of Alternate Arguments] GBT also argues that the district court erred by declining to modify its judgment of noninfringement on reconsideration. GBT’s argument is two-fold. [...] [I]t contends that it did not waive its signature sequence infringement theory because that theory was not introduced for the first time in its motion for reconsideration.
Id. at *12.
Holdings
[1: Claim Construction] We conclude that GBT’s submissions during prosecution of its stipulated construction for the term preamble constitute disclaimer. Although we generally construe terms according to their plain and ordinary meanings to one of ordinary skill in the art, we depart from that meaning where there is disclaimer. […] Here, GBT clearly and unmistakably limited the term preamble to “a signal used for communicating with the base station that is spread before transmission[,]” [during reexamination of the ’267 patent and prosecution of the ’427 patent].
Id. at *6 (text added).
[2: Waiver of Alternate Arguments] We conclude that GBT’s signature sequence infringe- ment theory was raised for the first time in its motion for reconsideration. Prior to its motion for reconsideration, GBT did not argue that the signature sequence alone in the accused device was itself a preamble, but instead that the PRACH preamble met the preamble limitations in the claims.
Id. at *13.
 
 
07/08/2014
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleX2Y Attenuators, LLC v. ITC, No. 2013-1340 (Fed. Cir. July 7, 2014).
IssueX2Y contends that the ITC improperly read several functional and structural limitations into the meaning of the term “electrode[“ based on statement on parent patents.] It contends that the plain meaning of “electrode” denotes a single conductor rather than three conductors, let alone a three-conductor sandwich structure having paired electromagnetically opposite conductors flanking the central conductor.
X2Y Attenuators, LLC at *6 (text added).
HoldingWe conclude that the ITC correctly construed the electrode terms. The patents’ statements that the presence of a common conductive pathway electrode positioned between paired electromagnetically opposite
Id. at *7.
 
 
 
 
06/29/2014
Category: Claim Construction  
 
 
 
By: Christian Hannon, Contributor 
 
TitleGE Lighting Solutions, LLC v. Agilight, Inc., No. 2013-1267 (Fed. Cir. May 1, 2014).
IssueGE Lighting Solutions, LLC (GE) appeals from the district court's grant of summary judgment that AgiLight, Inc.'s (AgiLight) accused products and processes do not infringe asserted claims of GE's U.S. Patent Nos. [A] 7,160,140 [the '140 Patent] [and] 7,520,771 [the '771 Patent] [based on a construction of "IDC connector"], [B] 7,832,896 [the '896 Patent] [based on a construction of "substantially ellipsoidal"] and [C] 7,633,055 [the '055 Patent] [based on a construction of "annular gasket"].
GE Lighting Solutions, LLC at *2 (text added).
HoldingWe reverse the grant of summary judgment with regard to the '140, '771 and '896 patents and remand [because [A] the district court's construction of "IDC connector" departed from its plain and ordinary meaning without being necessitated by the intrinsic recor, and [B] the district court's construction of "substantially ellipsoidal" would exclude an actual example embodiment is the specification]. [C] We affirm the grant of summary judgment with regard to the '055 patent [because the district court's construction of "annular gasket" was consistent with its plain and ordinary meaning].
Id. (text added).
 
 
 
 
06/23/2014
Category: Claim Construction  
 
 
 
By: John Kirkpatrick, Contributor  
 
TitleHowlink Global LLC v. Network Comm., No. 2013-1181 (Fed. Cir. April 2, 2014)(non-precedential).
IssueHowLink challenges the construction of two terms: (1) “temporarily transmitting voice of a caller to the called terminal to identify the caller when the second communication link is established,” and (2) “prohibiting voice transmission until a collect call acceptance arrives after the temporary voice transmission.” The dispute over these claims is about whether the claims of the [U.S. Patent No. 7,876,744 B2] patent require that a caller be able to talk to the called party temporarily before a decision to accept the collect call is made.
Howlink Global LLC at *2 (text added).
HoldingConsistent with the claim language, the description of the embodiments points to a construction where “transmitting the voice of a caller” requires a “live” voice.
Id. at *15.
 
 
 
06/15/2014
Category: Claim Construction 
 
 
 
 
 
By: Samuel Dillon, Contributor 
 
TitleTakeda Pharma. Co. v. Zydus Pharma USA, Inc., No. 2013-1406 (Fed. Cir. Feb. 20, 2014).
Issues
[1] Claim construction and Infringement[Whether the district court erred in finding that claim 1 was infringed because it] construed the claim term “fine granules having an average particle diameter of 400 μm or less” . . . to mean “fine granules up to and including the enteric coating layer having an average particle diameter of 400 μm (±10%) or less.”
Takeda at *3 (emphasis added) (text added).
[2] Indefiniteness[Whether] the '995 patent is indefinite because it does not specify the method of measurement that should be used to determine average particle diameter.
Id. at *10-11 (text added).
[3] Written Description[Whether claim 1 is invalid for lack of written description because it] addresses average particle size in the finished tablet, while the specification only teaches how to measure particle size pre-tableting with no discussion of how to ensure particle size is not altered by that process.
Id. at *14 (text added).
[4] Enablement[Whether] the patent is invalid for lack of enablement because a skilled artisan would not be able to determine the average particle diameter using the coulter counter method of measurement without undue experimentation.
Id. at *17 (text added).
Holdings
[1] Claim construction and Infringement
[T]he district court erred in reading a margin of error into the disputed claim term . . . when the phrase "400 μm or less" is not qualified by the word "about" or any other indicator of imprecision.
Takeda at *6.
[Without the added breadth of the margin of error,] there can be no dispute that Zydus’s ANDA product does not literally infringe claim 1 of the ’994 patent.
Id. at *9-10 (text added).
[2] IndefinitenessThat there is more than one way of determining the average particle diameter of a particular sample does not render that clear claim language indefinite.
Id. at *13.
[3] Written Description[A] hypothetical possibility that tableting could affect particle size in a relevant way [does not warrant finding] that the district court committed clear error by finding that such evidence was not clear and convincing proof of invalidity.
Id. at *15 (text added).
[4] Enablement[B]ecause the patent identifies laser diffraction as a viable measurement technique, and there is no dispute that a skilled artisan would know how to use laser diffraction to measure particle diameter, Zydus has not established that the patent is invalid for lack of enablement on this basis.
Id. at *16. 
 
 
05/29/2014
 
 
 
 
By: Roy Rabindranath, Contributor
 
TitleRealtime Data, LLC v. Morgan Stanley, No. 13-1092 (Fed. Circ. January 27, 2014) (non-precedential).
Issues
[1] "Realtime [argues] that the district court erred in its construction of three claim terms: [a] “descriptor indicates,” [b] “data field/block type,” and [c] “data stream.” [...]
Realtime Data, LLC at *18 (text added, internal citations omitted).
[2] Realtime argues that the district court erred in granting summary judgment of noninfringement of [various claims in the ‘568, ‘747 and ‘651 patents] by the accused systems because aspects of the Defendants’ Fast System meet the [a] “descriptor indicates,” [b] “data field/block type,” and [c] “data stream” limitations as construed by the court.
Id. at *23-24 (text added).
[3] [Whether] the district court abused its discretion in precluding [Appellant] from asserting infringement under the doctrine of equivalents, applying its local rules in doing so.
Id. at *28 (text added).
Holdings
[1][a] “Although the written description does define the ‘data compression type descriptor’ as ‘any recognizable data token or descriptor that indicates which data encoding technique has been applied to the data,’ the preceding sentence [in the Specification] also teaches that "an appropriate data compression type descriptor is appended to the encoded data block. [Therefore, the court did not unnecessarily add] additional limitations, requiring that the indicator be appended to the encoded data for the purposes of specifying the encoder used.” Realtime Data, LLC at *18 (text added, internal citations omitted). [b] “The district court was correct in concluding that, based on the specifications of the patents, the ‘data field/block type’ term must be tied to some analysis of the content of the data field or block and cannot simply encompass any characteristic or attribute of data. Id. at *20 (text added). [c] “[Finally,] [Realtime is bound to its expert’s description during reexamination proceedings, who] described the process of ‘receiving a data stream’ from an external source as a ‘passive one requiring no control over the characteristics of the received data stream by the receiver.’“ Id. at *21-23 (text added, internal citations omitted).
[2][a] “[The] Defendants' accused Fast systems [do not] meet the ‘descriptor indicates’ limitation by appending both a PMAP and Template ID to the message for purpose of specifying the encoders used to encode that message.” Realtime Data, LLC at *24 (text added). [b] “[Also, the Fast systems] process does not analyze the content of the data block for categorization as one of several different data types, as required by the ‘data field/block type’ claim construction, but simply looks to see whether certain fields in the Template can be encoded to minimize the size of the message. The accused systems thus cannot infringe the claims requiring a ‘data field/block type’ limitation.” Id. at *24-25 (text added, internal citations omitted). [c] [Finally, the evidence was] ‘one sided’ in showing that the accused products received data from internal sources, and the district court thus did not err in concluding that the accused systems did not meet the ‘data stream’ limitation. [In addition, the] parties stipulated that this limitation means that ‘the systems (or method) selects the lossless encoders based on an analysis of content of the data blocks (or data fields).’ […] Realtime cannot now change the construction that it had agreed to in the district court.” Id. at *25-26 (text added, internal citations omitted).
[3] The district court was well within its discretion to preclude Realtime from asserting infringement under the doctrine of equivalents. In asserting its allegations of infringement under the doctrine of equivalents two and a half years into the litigation, Realtime failed to comply with the local rules of both the Eastern District of Texas and the Southern District of New York, which require complete infringement assertions within 10 and 14 days, respectively.
Id. at *29.  
 
 
05/23/2014
Category: Claim Construction  
 
 
 
 By: John Kirkpatrick, Contributor
 
TitleShire Development, LLC v. Watson Pharma., Inc., No. 2013-1409 (Fed. Cir. March 28, 2014).
Issues
[1] [Did the district court err by construing] “'lipophilic matrix' [as] a matrix that includes at least one lipophilic excipient[?]”
Shire Development, LLC at *9-10 (text added, internal citation removed).
[2] In construing the matrix terms, the district court rejected Watson’s position that the inner matrix and outer matrix must be “separate and distinct.”
Id. at *10 (text added).
Holdings
[1] [Lipophilic] is an adjective that modifies matrix. [...] Thus, the matrix [itself] must exhibit the [...] lipophilic characteristic.
Id. at *10 (text added, internal citation removed).
[2] A court must identify “[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention.” [, therefore, a proper interpretation is that the inner and outer matrices must be “separate and distinct” such that they retain their claimed properties and are consistent with their respective group limitations]
Id. at *14 (text added).
 
 
 
 
 
05/01/2014
Category: Claim Construction 
 
 
 
By: John Kirkpatrick, Contributor
 
TitleUnited Video Properties, Inc. v. Amazon.com, No. 2013-1396 (Fed. Cir. April 8, 2014) (non-precedential).
Issue
[1] [Does] removing “Internet delivered data” [from the disputed claim] during prosecution in response to the PTO examiner’s written description rejection, act as a clear disavowal of the [claimed] data feed being delivered to the users via the Internet[?] United Video Properties at *7 (text added).
[2] [W]hether [the term "schedules"] limited the interactive program guide to displaying current and “forward-looking” programs.
Id. at *5 (text added).
Holdings
[1] We do not rely on the prosecution history to construe the meaning of the claim to be narrower than it would otherwise be unless a patentee limited or surrendered claim scope through a clear and unmistakable disavowal.
Id. at *7.
[2] The words of a claim are generally given their ordinary and customary meaning, which is the meaning that a term would have to a person of ordinary skill in the art after reviewing the intrinsic record at the time of the invention. [...] The intrinsic record includes the claims, the specification, and the prosecution history.
Id. at *9 (text added, internal citation omitted).
 
 
 
04/27/2014
Category: Claim Construction 
 
 
 
 
By: Christian Hannon, Contributor 
 
Titlee2Interactive, Inc. v. Blackhawk Network, Inc., No. 2013-1151 (Fed. Cir. Mar. 12, 2014) (non-precedential).
Issue The central issue in this appeal is whether the asserted claims [of U.S. Pat. No. 7,578,439 (the '439 patent)] require using the recited “terminal identifier” for determining if the terminal is authorized to make the requested transaction. 
e2interactive at *3 (text added).
HoldingWe hold that through clear and unmistakable disclaimer, InComm[,] [which includes e2Interactive,] limited the scope of the asserted claims to require use of the terminal identifier for determining if a terminal is authorized to make the requested transaction.
Id. at *7.


 
04/15/2014
Category: Claim Construction  
 
 
 
 By: Abby Lin, Contributor 
 
TitleCISCO Sys., Inc. v. Lee, No. 2012-1513, -1514, -1297 (Fed. Cir. Feb. 21, 2014) (nonprecedential).
Issues
[1a] [Regarding the construction of "networks",] Teles argues packet-switched network and the line-switching network [of Claim 68] must be “two independent and distinct networks” … [and that the Board’s holding of the D and B channels of a single ISBN network cannot constitute packet- and line-switching networks… because the D and B channels are part of the same network].
Cisco, at *11-12 (text added, internal citations omitted).
[1b] Teles argues the Board should have construed both [“telephone call” and “data transfer with real-time properties”] to mean “end-terminal-to-end-terminal communications connections with a communications time delay of less than 0.5 seconds.”
Id. at *14(text added, internal citations omitted).
[2] [Teles] further argues the Board improperly failed to interpret the terms “control signal” and “communications connection.”
Id. at *10(text added).
[3] Claim 91 and 104 … add the limitation of “a multiplexer device for multiplexing data of several origin end terminals over a single line connection through the line-switching network.” … Cisco argues claims 91 and 104 are anticipated by Focsaneanu, and would have been obvious over Foxsaneanu, Jonas (or Yoshida), and Lucent. With respect to anticipation, Cisco argues Focsaneanu discloses changing-over between packet and line switching during an active transmission, and that the Board lacked substantial evidence in finding otherwise.
Id. at *19-20.
Holdings
[1a] Although “ISBNs are conventionally known as line-switched networks,” the Board correctly determined that “the networks in the instant claims” can “be read onto an ISBN under a broadest reasonable interpretation.” This court therefore affirms that the claimed packet-switching network and line-switching network includes a single telecommunications network with multiple channels, such as an ISBN network [because the specification does not disclose that two separate networks are required].
Cisco, at *13 (text added, internal citations omitted).
[1b] Teles is therefore incorrect that the broadest reasonable interpretation of “telephone call” and “real-time” data transfer requires a specific time delay limit [because the specification does not mention a 0.5 second time delay in the context of line switching]. See Toshiba Corp., v. Imation Corp., 681 F. 3d 1358, 1369 (Fed. Cir. 2012) (“We do not read limitations form the specification into claims.”). This court affirms the Board’s construction of the terms as any “structure capable of sustaining a telephone call or providing real-time properties.”
Id. at *14-15 (text added. Internal citations omitted).
[2] Contrary to Teles’s argument [regarding “control signal” and “communications connection”], the Board had no obligation to consider claim construction challenges that were not actually raised before it. See 37 C.F.R. § 41.67(c)(1)(vii).
Id. at *16 (text added, internal citations omitted).
[3] Because the Board’s improper limitation of the claimed multiplexer was its sole reason for finding claims 91 and 103 not obvious, the Board’s allowance of claims 91 and 104 is reversed. Once the proper scope of claim 91 and 104’s multiplexer is understood, it is apparent that including such a multiplexer in the combination of Focsaneanu, Lucent, and inter alia, Jonas, is no more than “the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Id. at *22 (footnote omitted).
 
03/16/2014
Category: Claim Construction  
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleVederi, LLC v. Google, Inc., No. 2013-1057, -1296 (Fed. Cir. March 14, 2014).
IssueVederi stated that the limitation “depicting views of objects . . . the views being substantially elevations of objects” means “front or side views of objects.” Google contended that the limitation means “vertical flat (as opposed to curved or spherical) depictions of front or side views.”
Vederi at *9.
HoldingHaving analyzed the claims, the specification and the prosecution history [which permit a construction broader than flat views], this court concludes that the district court erred in construing “images depicting views of objects in a geographic area, the views being substantially elevations of the objects in the geographic area” as “vertical flat (as opposed to curved or spherical) depictions of front or side views.” To the contrary, the record shows that “views being substantially elevations of the objects” refers to “front and side views of the objects.” Thus, as properly construed, the claims do not exclude curved or spherical images depicting views that are substantially front or side views of the objects in the geographic area.
Vederi at *14 (text added).
 
03/13/2014
Category: Claim Construction   
 
 
 
By: Abby Lin, Contributor  
 
TitleSuperior Ind., LLC v. Masaba, Inc., No. 2013-1302 (Fed. Cir. Jan. 16, 2014).
Issue“[The District Court’s opinion and order] ”did not explain how the construction of any particular term affected the infringement analysis. [Can Superior appeal claim construction?]” Superior, at *2(text added).
Holding:“Superior expressly reserved the right to challenge the district court’s claim construction on appeal, and does so now. But because it is unclear from the record how the disputed constructions relate to infringement, we vacate the district court’s judgment and remand for further clarification.” Id. at *2.
 
02/27/2014
Category: Claim Construction  
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleStarhome GMBH v. AT&T Mobility LLC, No. 2012-1694 (Fed. Cir. Feb. 24, 2014).
IssueOn appeal, Starhome asserts the same construction of “intelligent gateway” that it urged in the district court (“a network element that uses knowledge implemented in databases or the like and application logic to perform its operations”). In support of that construction, Starhome argues that the specification does not require the gateway to be connected to an external network.
Starhome GMBH at *7-8.
HoldingConsidering “gateway” in the context of the claims and specification of the ’487 patent, one of ordinary skill would have understood that the inventors did not depart from the ordinary meaning of “gateway” with their use of the term “intelligent gateway[,” because the specific embodiments discussed in the written description describe structures (e.g., database, data packet switch network), that conform with a consistent definition throughout various technical dictionaries.]
Id. at *11-12.
 
 
 
02/25/2014
Category: Claim Construction  
 
 
 
By: John Kirkpatrick, Contributor 
 
TitleFrans Nooren Asdichtingssystem v. Stopaq Amcorr, Inc., No. 2013-1200 (Fed. Cir. Feb. 21, 2014).
Issues
[1] [T]he limitation at issue is a claim construction—that “a filler” in [U.S. Patent No. 5,898,044] can contain only “one material.” Frans Nooren at *6 (citations removed, text added).
[2] Second, Amcorr argued, polypropylene in the accused products is not a “filler” at all. Id. at *5 (text added).
Holdings
There has been insufficient exploration in the record, both here and in the district court, of too many questions of apparent relevance to identifying a proper construction of the limitation, which requires, among other things, that the construction itself supply “a meaningfully precise claim scope.” Frans Nooren at *11-12 (citations removed).
[1] We see no basis in the language or specification for limiting “a filler” to “one material.” We have been pointed to nothing about a customary usage of the term itself, and nothing in the specification’s use of it, that excludes from being “a filler” a mixture of two different “materials.” Id. at *7 (citations removed, text omitted).
[2] [The district court] does not state a claim construction of “a filler,” let alone justify a particular construction by addressing the parties’ respective contentions about the term’s meaning through the usual analysis. Id. at *9 (text added).
 
02/18/2014
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleButamax Adv. Biofuels LLC v. Gevo, Inc., No. 2013-1342 (Fed. Cir. Feb. 18, 2014).
IssueThe primary dispute between the parties concerns whether the claimed KARI must be “NADPH-dependent.” […] [The district court] concluded that in the “state of the art,” the “KARI enzyme known by the EC number 1.1.1.86 was generally understood to be NADPH- dependent.” […] This decision is premised in large part on the district court’s conclusion that the patentees acted as their own lexicographers in defining KARI by reference to EC number 1.1.1.86 and the enzyme’s “use” of NADPH rather than use of NADH or both NADPH and NADH. […]
Butamax Adv. Biofuels LLC at *10 (internal citations omitted, text added).
Holding[The "KARI enzyme" is not “NADPH-dependent,” because (i) the specification’s definition does not exclude the possibility of using additional cofactors, and (ii) the specification’s incorporation of an enzyme classification standard (EC number 1.1.1.86) is not a clear intent to define KARI. Therefore], the term “acetohydroxy acid reductoisomerase” is construed as “an enzyme, whether naturally occurring or otherwise, known by the EC number 1.1.1.86 that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate.”
Id. at *20-21 (text added).
 
02/03/2014
Category: Claim Construction  
 
 
 
By: Christian Hannon, Contributor 
 
TitleAstrazeneca AB v. Hanmi USA, Inc., No. 2013-1490 (Fed. Cir. Dec. 19, 2013) (non-precedential).
IssueThis appeal presents a single issue: whether the written description limits "alkaline salt" in [ AstraZeneca AB's U.S. Patent No. 5,714,504] to certain specifically named salts [found in the disclosures of AstraZeneca's patents]. Astrazeneca AB at *2 (text added).
HoldingWe hold that [the written description limits "alkaline salt" in the '504 patent to certain specifically named salts].The written description describes the invention clearly and narrowly as including only those salts and AstraZeneca points to nothing in the intrinsic record that is sufficient to overcome that disclaimer. Id. at *2 (text added).
 
01/15/2014
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleIn re Gianelli, No. 2013-1167 (Fed. Cir. Jan. 13, 2014).
IssueGiannelli argues that the Board’s decision sustaining the examiner’s rejection is based on an incorrect assertion that the chest press machine disclosed in the ’447 patent could be used as a rowing machine [per the claims] rather than considering how it would be used.
In re Gianelli at *6 (text added).
HoldingBecause the Board determined that the machine claimed in the ’261 application would have been obvious by merely showing that a rowing exercise could be performed on the machine disclosed in the ’447 patent, and not whether it was obvious to modify the chest press machine to contain handles “adapted to” perform the rowing motion by pulling on them, the Board erred in concluding that the examiner had met his initial burden of establishing a case of prima facie obviousness. [...]. Physical capability alone does not render obvious that which is contraindicated.
Id. at *9 (internal citations omitted).
 
01/14/2014
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitleProveris Sci. Corp. v. Innovasystems, Inc., No. 2013-1166 (Jan. 13, 2014).
IssueThe first question we must answer [in an infringement analysis during a contempt of an injunction suit] is whether the preamble is properly construed as importing a limitation into the claim.
Proveris Sci. Corp. at *7 (text added).
Holding[R]eading the patent as a whole, the inventors clearly relied on both the preamble and the body of claim 3 to define the claimed invention [because (i) the specification discusses essential features that are recited only in the preamble, and (ii) the body of the claims refers back to these features in the preamble]. Accordingly, the preamble of claim 3 should be construed as importing a limitation into the claim.
Id. at *9 (text added).
 
12/03/2013
Category: Claim Construction 
 
 
 
By: Christian Hannon, Contributor   
 
TitleMicrosoft Corp. v. International Trade Commission, No. 2012-1445, -1535 (Fed. Cir. Oct. 3, 2013).
Issues
[1] Microsoft argues on appeal that the ALJ improperly “construed [resource state information] to require additional information about the version of the resource, akin to a version number [which was not recited in the claims].”
Microsoft Corp. at *7 (text added).
[2] The ALJ determined that Microsoft failed to make that domestic-industry showing because it did not offer sufficient proof of articles that were actually protected by the patent.
Id. at *10.
[3] The Commission’s grounds for finding no infringement rest ultimately on its view of what the claims require [which include: i. that the “a menu selection relating to a class of objects” requires specific classes of objects not recited in the claims, and ii. that "menu positioned in the proximate of a graphical representation" requires the positioning to be 'deliberate,' though not recited in the claims].
Id. at *19 (text added).
Holdings
[1] [T]he term “state” [in "resource state information"] is so general on its face that it begs for clarification from the specification regarding what aspect of the resource is to be identified. We conclude that the ALJ correctly understood “state” in the context of the whole patent as requiring information about the version of the resource.
Microsoft Corp. at *7-8 (text added).
[2] "Although Dr. Olivier [Microsoft's expert] purported to identify “client applications” in an example application that Microsoft provides to third- party phone manufacturers, Microsoft failed to show that any such “client applications” are actually implemented on any third-party mobile device." Id. at *10. "The Commission did not lack substantial evidence to support its finding that Microsoft simply failed to identify any actual phones with the required components performing as required." Id. at *11.
[3] There is no dispute here about how the accused products work, only about what the claims require. […] On a correct understanding of the claim requirements, we conclude, the main group of accused products infringe [because the ALJ read into the claims features that are not specifically recited or inherently required by the claims]
Id. at *19 (text added).
 
10/02/2013
Category: Claim Construction 
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleSkinmedica, Inc., v. Histogen Aesthetics, LLC., 2012-1560, (Fed. Cir. August 23, 2013).
Issue"[T]he ordinary meaning of 'culturing . . . cells in three-dimensions' would reach the use of beads. The question is whether the patentees [...] defined 'culturing . . . cells in three-dimensions' to exclude the use of beads." Skinmedica, at *13 (text added).
HoldingBased on the clear language of the specification [which: (i) disclaimed the ordinary meaning of "culturing cells … in three dimensions"; (ii) had a patent incorporated by reference which did not particularly define said term; and (iii) had an unincorporated cited patent that served only as extrinsic evidence] and the statements made by the patentees during prosecution, we hold that the inventors of the ’494 and ’796 patents disclaimed beads as a method to culture the cells that condition the medium used in their claimed inventions. We accordingly affirm the district court’s construction of the term “culturing . . . cells in three-dimensions,” common to all the assert claims, as “growing . . . cells in three dimensions (excluding growing in monolayers or on microcarrier beads).”
Id. at *43 (text added).
09/23/2013
Category: Claim Construction 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor  
 
TitlePlantronics, Inc. v. Aliph, Inc., No. 2012-1355 (Fed. Cir. July 31, 2013).
Issue[1] "[W]hether the district court improperly construed the terms “stabilizer support member” in claim 1 and “concha stabilizer” in claim 10 [because Plantronics elected a species limited to “elongated” structures]." Plantronics, at *7 (text added).
[2] "[W]hether the district court erred in granting Aliph’s motion for summary judgment of obviousness [based on a common sense finding]. " Id. (text added).
Holding[1] “The ‘stabilizer support member’ and the ‘concha stabilizer’ are not structurally limited either in claim language or in their corresponding description in the specification. Likewise, the election of species pertaining to Figures 1A and 1B in response to the restriction requirement does not narrow the claim scope, because the election was made without any indication that the ‘stabilizer support’ and the ‘concha stabilizer’ to one that is ‘longer than [they are] wide.’” Plantronics, at *14.
[2] “[W]hen all of the factual disputes regarding the objective evidence are resolved in favor of Plantronics, we cannot hold that the claims would have been obvious as a matter of law. […] The commercial success of Aliph’s alleged copied product and the failure of attempts to combine the prior art elements before the ’453 patent provide a genuine issue of material fact as to whether it would be ‘common sense’ to combine the elements in the prior art to arrive at the claimed invention.” Plantronics, at *21-22.
 
09/03/2013
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleBayer Cropscience AG v. Dow Agrosciences LLC, No. 2013-1002 (Fed. Cir. Sept. 3, 2013).
Issue“Bayer’s position from the outset has been that the phrase ["biological activity of 2,4-D monooxygenase "] covers any enzyme that triggers cleaving of the side chain of 2,4-D […], even if it is a dioxygenase [which is the later-discovered correct term for the enzyme] and even if it does not share other biological activities of the particular enzyme […].” Bayer Cropscience at *6 (text added).
Holding“Like the district court, we see two problems with [Bayer's] position: (A) familiar aspects of textual analysis [such as ordinary meaning and the intrinsic record] point strongly the other way [toward a narrow construction]; and (B) [interpreting per Beyer’s suggestion] would read independent claim 1 so broadly as to raise serious doubts about validity [for lack of written description].” Bayer Cropscience at *7-8 (text added).
 

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