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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