In a recent decision, the Federal Circuit reversed a decision of the United States District Court for the District of Massachusetts. The district court had granted summary judgment of noninfringement to the defendant finding that the defendant's accused device did not perform a function found only in the preambles of the asserted claims.

The Federal Circuit held that the disputed preamble term did not limit the asserted claims, and therefore, reversed and remanded the case for further findings.  Specifically, the court noted there was no suggestion in the prosecution history that the preamble was limiting, the preamble did not provide any antecedent basis for terms in the body of the claim (even though one element used "the" in the body of the claim), and the preamble did not define an essential component of the invention, such that the body of the claim defined the complete invention.  Based on these factors, the preamble was not a limitation of the claim, and the summary judgment of noninfringement was reversed.

Judge Dyk dissented, and invited the court to take the issue of preambles en banc to create a bright-line rule that preambles are always limiting, rather than relying on the context of each patent.

More concerning Am. Med. Sys., Inc. v. Biolitec, Inc. after the jump.

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In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness.  The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness:  the jury held a dependent claim obvious but the independent claim from which it depends not obvious.  The court stated that such a result reflects an "irreconcilable inconsistency" and thus a new trial on obviousness must be granted.

The court also addressed the question of incorporation by reference.  The defendant argued the claims were anticipated based on a prior art patent that made reference to another patent for one of the relevant limitations.  The district court held the incorporation by reference was ineffective and excluded expert testimony regarding the "combined" prior art.  The Federal Circuit reversed, holding the incorporation by reference was sufficiently specific to be successful, and remanded the issue of anticipation to the district court for redetermination.

More on Callaway Golf Co. v. Acushnet Co. after the jump.

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In a recent decision, the Federal Circuit vacated and remanded a district court's judgment of noninfringement based on the parties' stipulation after claim construction.  The district court construed three claim terms in a way that the parties agreed rendered all accused products noninfringing, and the plaintiff appealed.

On appeal, the Federal Circuit reversed the district court's claim construction of each of the terms.  The opinion followed a straightforward Phillips analysis for each term.  Applying the revised construction, the court held remand was appropriate to determine the issue of infringement in the first instance, even though the defendant, for the first time at oral argument, claimed its devices did not infringe even under the revised constructions.

More detail of Paragon Solutions, LLC v. Timex Corp. after the jump.

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In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment in a § 146 action brought after an interference proceeding at the USPTO.  The district court agreed with the Board's decision to award priority to the senior party in the interference, granting the senior party's motion for summary judgment that its specification satisfied the written description requirement for the interference count.  In coming to this conclusion, the district court construed the count by reference to the specification of the senior party's application, rather than by reference to the specification of the junior party's issued patent.  The district court also determined the proper standard of review was for substantial evidence, holding the junior party did not advance any "meaningful evidence" apart from what was considered by the Board.

The Federal Circuit reversed.  The court determined the district court erred both with regard to its determination that 1) the claims should be construed in light of the host application whose written description was being challenged and 2) that evidence proffered to the district court was insufficient to require de novo determination of the facts under § 146.  The court reconciled two prior decisions, In re Spina and Rowe v. Dror, dealing with the proper source for claim construction in an interference.  As described by the court:

[W]hen a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.  When a party challenges a claim's validity under § 102 or § 103, however, [the Federal Circuit] and the Board must interpret the claim in light of the specification in which it appears.

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In a recent decision, the Federal Circuit addressed a variety of claim construction, infringement, and validity issues in an appeal from the International Trade Commission.  After construing five disputed claim terms, the ITC held one of four representative products infringed, the remaining three did not infringe, and one claim invalid as anticipated.  Both parties appealed.

The Federal Circuit affirmed in part, reversed in part, and remanded.  The court affirmed the ITC's construction of 4 of the 5 disputed terms.  However, the modification of one term resulted in the court vacating the ITC's determination of invalidity of one claim, as well as infringement of two of the four devices.  The Federal Circuit affirmed the finding of noninfringement of the other two devices, and remanded for reconsideration of the various issues in light of the revised construction.

More detail of Linear Tech. Corp. v. Int'l Trade Comm'n after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court's grant of summary of no literal infringement and that prosecution history estoppel barred application of the doctrine of equivalents.  During prosecution of the patent, a total of three limitations from two different dependent claims were added to the asserted claim in separate amendments, although only two of the limitations were addressed by the applicant and examiner.  The district court held the third element was not literally present in the accused product, and, based on the amendment, could not be present under the doctrine of equivalents.

The Federal Circuit agreed.  The court held it was immaterial that the first amendment (with the "extra" limitation at issue) did not result in allowance; the estoppel applied to each of the added limitations.  Importantly, the court also observed that this presumption of estoppel applied to all claims of the patent containing the limitation, whether or not they were amended:

Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the '625 patent, that correspond to the limitations of claim 7.

The court also held that even though the third limitation was not specifically argued, its addition was not tangential to the rationale underlying the amendment, thereby preventing application of prosecution history estoppel.  Specifically, the amendment stated one of the two limitations was not present in the prior art, but added the limitation was not present "in combination with the other structure" of the claims.  This additional language brought the additional limitation into the argument, making it not tangential.  Further, the court held the absence of explanation why the additional limitation was added meant it could not be tangential, because whether an amendment is tangential must be determined from the prosecution record.  Accordingly, the court affirmed the district court's grant of summary judgment of noninfringement.

More detail of Felix v. Am. Honda Motor Co. after the jump.

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In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law of obviousness.  A jury held the claim at issue was not obvious, and the district court denied the defendant's post-verdict motion for judgment as a matter of law on the issue.

While the Federal Circuit affirmed the district court's construction of two disputed claim terms, according to the Federal Circuit, a single reference disclosing multiple embodiments in sequential drawings that disclosed all the claim limitations rendered the claim in question obvious.  

More details of Boston Scientific Scimed, Inc. v. Cordis Corp. after the jump.

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In a decision Monday, the Federal Circuit affirmed a district court's claim construction and related judgment of noninfringement.   The decision focused on the issue of claim construction in means plus function claims. The critical limitation used the term "mechanism" without any additional structural elements, and as a result the district court construed it to be a means-plus-function claim.  The Federal Circuit affirmed, noting in the past it had held limitations with the term "mechanism" without additional modifiers to be means-plus-function limitations.  Because it was undisputed the accused device did not have the corresponding structure in the specification or its structural equivalent, the court affirmed the district court's grant of summary judgment.

More detail of Welker Bearing Co. v. PHD, Inc. after the jump.

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In a decision last week, the Federal Circuit affirmed a district court's claim construction and its related summary judgment of noninfringement.  The district court held the applicable claim term was narrower than the "lay understanding" of the term, based on the specification.  Because the specification was clear, the district court refused to consider the prosecution history in the claim construction analysis.

The Federal Circuit agreed that the specification supported the district court's narrower reading of the term, noting the specification repeatedly characterized as "the present invention" the narrower understanding of the term.  The court also noted that while it must consider the prosecution history, the prosecution history was "not particularly helpful to either party's claim construction position."  As a result, the Federal Circuit affirmed the district court's claim construction.  Because it was undisputed there was no infringement under this construction, the court also affirmed the summary judgment of noninfringement.

More detail of Netcraft Corp. v. eBay, Inc. after the jump.

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