In a decision yesterday, the Federal Circuit held that a district court construed a claim limitation too narrowly.  However, even under the broader construction, summary judgment was still appropriate, because there was no genuine issue of fact that the accused method still did not practice that element, either literally or under the doctrine of equivalents.

More detail of PSN Ill., Inc. v. Ivoclar Vivadent, Inc. after the jump.

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In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction.  The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid.

The court considered two competing constructions of the same claim terms, one by the district court in this case, and another by a second district court in an unrelated case involving the same patent.  The Federal Circuit found the second district court's construction to be the proper one, and therefore reversed the construction on appeal (and the related finding of infringement).

More detail of Finistar Corp. v. DirecTV Group, Inc. after the jump.

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In a recent decision, the Federal Circuit held that a district court erred in its construction of several claim terms in a patent, and as a result, vacated the district court's summary judgment of noninfringement and no invalidity.  The court affirmed the district court's decisions regarding several other issues, including laches, inequitable conduct, and inventorship.

One of the claim terms at issue was in the preamble of the claims.  The court noted that "if [the preamble term] is reasonably susceptible to being construed to be merely duplicative of the limitations in the body of the claim (and was not clearly added to overcome a rejection), we do not construe it to be a separate limitation."

More detail of Symantec Corp. v. Computer Assocs. Int'l, Inc. after the jump.

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In a decision last week, the Federal Circuit vacated and remanded a jury's finding of willful infringement case back to a district court, based on errors in claim construction and application of the doctrine of equivalents.  The district court's original Markman hearing determined that no construction was necessary for a particular claim term, "only if," whose scope was disputed by the parties.  The court held the term did not require construction, as it was two simple, plain English words that were well understood.  The district court also permitted the jury to consider infringement under the doctrine of equivalents, finding that while the "only if" limitation was added for a substantial reason relating to patentability, the Festo presumption was rebutted because the rationale underlying the narrowing amendment was tangentially related to the equivalent at issue.

The Federal Circuit held that it was error for the district court not to construe the "only if" limitation.  While the court noted that "district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims," in this case, because "the parties present[ed] a fundamental dispute regarding the scope of a claim term, it [was] the court's duty to resolve it."  The court also determined that the addition of the "only if" limitation during prosecution was not tangential to the alleged equivalent, and therefore application of the doctrine of equivalents was precluded.

More detail on O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co. after the jump.

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In a decision last week, the Federal Circuit decided a case addressing the limitations of what constitutes "insolubly ambiguous" claim terms in order to amount to indefiniteness.  The district court held the asserted claims invalid because they impermissibly mixed two statutory classes of subject matter, as well as because they required construing the same term differently in the same claim for the claims to make sense.

The Federal Circuit reversed the invalidity holding, finding that while the claims were written in an "unconventional" format, that format did not result in mixing multiple classes of statutory subject matter in the same claim.  Further, while the court acknowledged that typically the same term is given the same construction throughout a claim (particularly when the second instance is prefaced with "the" or "said," thereby making reference to the first use), in this case, there was no "uniform language" surrounding the term that mandated an identical construction, and as a result, the claim was not indefinite.

Not all was good for the patentee, however, as the court affirmed the district court's claim construction.  The patentee stipulated that if the claim construction was affirmed, there was no infringement, and as a result, the district court's summary judgment of noninfringement was affirmed.

More detail of Microprocessor Enhancement Corp. v. Texas Instruments, Inc. after the jump.

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In a decision last week, the Federal Circuit affirmed a district court's permanent injunction against a defendant to prevent infringement of a patent.  The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word "and" to mean "or."  Specifically, based on the specification and other claims, the court determined such a construction was consistent with the intrinsic evidence.  The court also rejected each of the defendant's affirmative defenses.

The Federal Circuit affirmed.  Turning first to claim construction, the court held "and" can be interpreted to mean "or" in claim language when the specification warrants that construction.  In this case, interpreting "and" as requiring both elements would have rendered some dependent claims meaningless, as well as excluded the preferred embodiment from the claims.  The court also affirmed the rejection of the affirmative defenses of inequitable conduct, obviousness, enablement.  Notably, in discussing the obviousness issue, the court stated:  "a flexible TSM test remains the primary guarantor against a non-statutory hindsight analysis such as occurred in this case."  It will be interesting to see whether the non-TSM grounds for an obviousness rejection outlined in the USPTO's examination guidelines will survive scrutiny by the Federal Circuit.

More detail of Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court's claim construction and its concomitant grant of summary judgment of noninfringement, as well as its denial of attorney fees under § 285.  The district court held the patentee had, during prosecution of the patent at issue, made a clear and unmistakable disavowal of claim scope, and as a result, under the doctrine of prosecution disclaimer, the accused devices could not fall within the scope of the claims.  The district court also held that the case was not exceptional, and therefore attorney fees were not warranted.

The Federal Circuit agreed with the district court, finding application of prosecution disclaimer appropriate, affirming the summary judgment of noninfringement.  The court further agreed that the case was not exceptional, and therefore affirmed the denial of attorney fees to the defendants.

More detail of Computer Docking Station Corp. v. Dell, Inc. after the jump.

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In a decision last week, the Federal Circuit held a district court construed 1 of 2 claim terms correctly, and incorrectly concluded that prosecution history estoppel barred application of the doctrine of equivalents to a third claim term because the narrowing amendment was only tangentially related to the equivalent at issue.  As a result, the court affirmed in part, reversed in part, and remanded.

One of the claim construction issues was interesting in that the court held that the prosecution history of the patent overcame the "presumption" of claim differentiation, namely that "dependent claims are presumed to be of narrower scope than the independent claims from which they depend."  This led to the strange result that the scope of some dependent claims was outside the scope of the independent claim from which they depended.  This seems to be contrary to § 112 ¶ 4, which requires a dependent claim "shall be construed to incorporate by reference all the limitations of the claim to which it refers."

Judge Prost dissented from the portion of the ruling regarding prosecution history estoppel, and would have held that the amendment was not tangential to the equivalent in question and therefore that prosecution history estoppel applied.

More detail of Regents of the U. of Cal. v. Dakocytomation Cal., Inc. after the jump.

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For a second time this week, the Federal Circuit vacated a preliminary injunction entered by a district court.  This time, the court found the district court's claim construction too broad, and under the courts revised, narrower construction, found that the plaintiffs were not likely to succeed on the merits of the case.  As a result, the Federal Circuit vacated the injunction and remanded the case.

More detail of Chamberlain Group, Inc. v. Lear Corp. after the jump.

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In a decision Wednesday, the Federal Circuit affirmed a district court ruling granting summary judgment of non-infringement.  At the outset, the court noted the patent at issue had been before the court multiple times, and the claim terms at issue in this appeal had already been construed by the court in earlier cases.

As the district court applied the Federal Circuit's earlier construction, the court had little trouble affirming on the claim construction issues.  As to infringement, the Federal Circuit likewise affirmed the district court's summary judgment of no infringement, as one group of accused products lacked at least one claim element (and there was insufficient information to generate a fact question under the doctrine of equivalents), and the other group of accused products lacked another claim element.

More detail of Miken Composites, L.L.C. v. Wilson Sporting Goods Co. after the jump.

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