If ordinary meaning of claim term does not resolve disputed construction, court must construe term 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," […] Continue Reading →
Same claim term can be interpreted differently in the same claim if specification warrants 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 […] Continue Reading →
Federal Circuit: And can mean or, if it makes the claim make sense 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 […] Continue Reading →
Patentee cannot recapture claim scope disavowed during prosecution to prove infringement 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 […] Continue Reading →
Dependent claim can be construed to be broader than independent claim based on prosecution history 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 […] Continue Reading →
Another preliminary injunction vacated on appeal, this time because of claim construction 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, […] Continue Reading →
Claims requiring an “insert” do not cover products with similar structure not “inserted” 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 […] Continue Reading →
Infringement of two claims and $74 million in damages affirmed, injunction reinstated In a decision last week, the Federal Circuit affirmed-in-part and reversed-in-part a jury verdict of infringement of a patent owned by Tivo relating to its DVR technology. The ruling was based on claim construction, with the court finding that, based on the correct construction of claims directed to the DVR hardware, there was no infringement […] Continue Reading →
Claim construction excluding disclosed embodiment improper absent disclaimer of some kind In a decision today, the Federal Circuit reversed a district court's claim construction and the associated summary judgment of noninfringement. The district court's construction of one of the claim limitations resulted in certain embodiments of the invention disclosed in the figures to be excluded from the scope of the claims. Based on this construction, the […] Continue Reading →
Sufficient structure recited in claim limitation using “means” to prevent application of – 112 – 6 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 […] Continue Reading →