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 recent decision, the Federal Circuit affirmed a district court's finding of indefiniteness but reversed the district court's holding of anticipation of other claims.  The district court held the means-plus-function limitations did not have corresponding structure disclosed in the specification, rendering them indefinite, and that the combination of two examples in a prior art publication anticipated the remaining asserted claims.

The Federal Circuit agreed the means-plus-function limitations were indefinite.  The limitations were computer-implemented, which means to be definite, the specification must disclose "more than simply a general purpose computer or microprocessor," but instead must disclose "the special purpose computer programmed to perform the disclosed algorithm."  There was no such disclosure here, so the Federal Circuit held the claims were correctly held indefinite.

Regarding anticipation, however, the court reaffirmed its previous cases holding in order to anticipate, it is not enough for all elements of the claim to be disclosed in a single reference.  All the elements must also be disclosed as arranged in the claim.  Here, the claim elements were spread across two different examples given in the allegedly anticipatory reference, so the Federal Circuit reversed the district court's summary judgment of anticipation because the reference did not disclose the elements as they were arranged in the claim.

More detail of Net MoneyIN, Inc. v. VeriSign, Inc. after the jump.

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In a recent decision, the Federal Circuit reversed a district court's reduction of the jury's damages award, remanding the case for a new trial on damages, and affirmed the jury's verdict of willful infringement and the district court's award of attorney fees under § 285.

The district court held there was insufficient evidence as a matter of law to support the jury's damages award, so it reduced the award from over $1 million down to just over $50,000. However, the court did not offer the patentee the option of a new trial. The Federal Circuit held this violated the Seventh Amendment, which requires a new trial unless the award was based on legal error, not present here.

Further, the Federal Circuit held the district court's jury instruction on the issue of actual notice under § 287 was legally incorrect, as it improperly foreclosed a finding of actual notice before the discovery of the defendant's infringement. As a result, the Federal Circuit remanded the case for a new trial on damages to address both the amount and the date from which damages should be calculated.

More detail of Minks v. Polaris Indus., Inc. after the jump.

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In a decision Friday, the Federal Circuit affirmed a district court's summary judgment of no anticipation, no invalidity for failure to comply with the written description requirement, and infringement, but reversed the district court's summary judgment of no invalidity based on obviousness.  In an unusual procedural move, the parties stipulated that for the issues on which both parties moved for summary judgment, the district court could make findings of fact based on the summary judgment record, making it similar to an inter partes proceeding at the TTAB for those issues.  This stipulation included all issues except obviousness. 

The Federal Circuit found no clear error in the district court's determination of the other issues, but held there was a genuine issue of fact that should have prevented summary judgment on obviousness.  The court noted the Graham factual inquiries underlying the obviousness determination were legitimately in dispute, thus rendering summary judgment inappropriate on that issue.

More detail of Commonwealth Sci. & Indus. Research Org. v. Buffalo Tech., 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 decision Friday, the Federal Circuit affirmed a final judgment of invalidity of all claims of a patent indefinite.  The claims had several means-plus-function clauses that were computer-implemented, however no algorithms for implementing the claimed functions were disclosed in the specification.  The district court held the claims invalid because there was no "structure" (i.e., algorithm) disclosed in the specification corresponding to the means-plus-function clauses.

The Federal Circuit affirmed, noting that when a means-plus-function clause is computer-implemented, there must be at least one example in the specification of an algorithm performing the function in order to meet the requirements of 35 U.S.C. § 112 ¶ 6 .  Without such an example, what is left is purely functional claim language, which is impermissible under the statute. 

Likewise, it is insufficient to argue that one of ordinary skill in the art would be able to implement the method.  While that may solve any § 112 ¶ 1 enablement concerns, it does not meet the statutory requirement of a disclosure of "structure" in § 112 ¶ 6.  As a result, the claims were held invalid as indefinite.

More detail of Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech. after the jump.

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In a decision yesterday, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement.  The district court held the relevant claim term was a means-plus-function limitation, as it used the word "means," as well as because in an interview summary in the prosecution history, it appeared the USPTO interpreted the term as a means-plus-function clause.  Based on this interpretation, the court granted summary judgment of noninfringement, as the accused device did not have the required function.

The Federal Circuit reversed, holding the limitation in question was not a means plus function limitation as it recited the "exact structure that performs the function[] in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure."  Further, the attorney's remarks when the amendment was made indicated that the structure set forth in the claim was intended to perform the function.  As a result, the claim element was not properly considered a means-plus-function element.  Under the revised claim construction, there were genuine issues of material fact regarding infringement, resulting in the reversal and remand.

More details of TriMed, Inc. v. Stryker Corp. after the jump.

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In a decision yesterday, the Federal Circuit partially reversed a district court's summary judgment of noninfringement of a patent directed to closed circuit television systems.  In granting summary judgment, the district court held that the doctrine of prosecution disclaimer limited the scope of the claims, finding the inventors characterized the invention narrowly in response to an office action.

The Federal Circuit disagreed, holding that there was not the necessary clear and unmistakable disavowal of claim scope necessary for prosecution disclaimer to apply.  Specifically, the statement in question was contrary to the description of the invention in the specification, was inconsistent with other statements made in the same office action response, and one of ordinary skill in the art would not recognize the statement to be a clear and unmistakable surrender of claim scope, because it would result in an inoperable system.  Because prosecution disclaimer did not apply "[o]n this unique amalgamation of facts," the court reversed the district court's claim construction.  However, because only one of three accused products potentially infringed even under the revised, broader claim construction, the district court's summary judgment was only partially reversed.

More detail of Elbex Video, Ltd. v. Sensormatic Elecs. Corp. after the jump.

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