Category Archives: Claim Construction

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Federal Circuit Finds Disclaimer Based on “Object of Invention” Language

The Federal Circuit’s recent decision in Pacing Technologies, LLC v. Garmin International, Inc.  (No. 2014-1396) provides patent litigators with a new tool for claim construction arguments and may make patent prosecutors reconsider their drafting techniques. The Federal Circuit held that a patent specification’s characterization of disclosed “objects of the invention”—a phrase commonly used by patent … Continue reading this entry

U.S. Supreme Court Modifies Federal Circuit’s Standard of Review for Claim Construction in Teva v. Sandoz

On January 20, 2015, resolving a long debated issue, the U.S. Supreme Court set aside the Federal Circuit’s de novo review of every aspect of a lower court’s claim construction decision, rejecting that form of review where the district court has resolved factual disputes and made factual findings about the extrinsic evidence. Teva Pharms. USA, … Continue reading this entry

PTAB Denies Late Attempt to Alter the Applicable Claim Construction Standard in an IPR

A recent decision from the Patent Trial and Appeal Board (the “Board”) highlights the different claim construction standards that are ordinarily applicable in post-grant review proceedings and in district court, and illustrates the Board’s inclinations towards tactics that would alter the complexion of an inter partes review (“IPR”) late in the proceedings. In an IPR, “[a] claim … Continue reading this entry

PTAB Terminates IPR Sua Sponte Where Claims Are Indefinite

As dictated by 35 U.S.C. § 311, a petitioner can pursue inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or “Board”) based on certain grounds of anticipation or obviousness under 35 U.S.C. §§ 102 or 103, respectively. This prior-art based inquiry generally involves an evaluation of patents or printed publications that the petitioner relies on … Continue reading this entry

Considerations If Conceding Infringement Or Designing Around

A decision issued by the Federal Circuit earlier this year raises a few things to have in mind when considering whether to concede infringement and when planning to design around a patent. In Proveris Scientific Corp. v. Innovasystems, Inc., 739 F.3d 1367, 109 U.S.P.Q.2d 1314 (Fed. Cir. 2014) Innovasystems, Inc. (“Innova”) was sued by Proveris … Continue reading this entry

Federal Circuit Upholds Invalidity Under 35 U.S.C. § 112 ¶ 2.

The Federal Circuit’s recent decision in Juxtacomm-Texas Software, LLC v. Tibco Software, Inc., Nos. 2013-1004, -1025 (Sept. 30, 2013) (nonprecedential) serves as a reminder of the vulnerability of patent claims that drift beyond the scope of what an applicant regarded as its invention: The decisions of the district court … construing the relevant claim language of U.S. Patent No. … Continue reading this entry

Judge Plager (Fed. Cir.) Suggests Construing Ambiguous Claims Against the Patent Holder

On August 6, 2013, the Federal Circuit issued a 48-page opinion in 3M Innovative Props. Co. v. Tredegar Corp., in which it dissected in excruciating detail the construction of patent claims directed to “elastomeric laminates” used in diapers and exercise pants. Reading only Judge Reyna’s majority opinion, one might think that the Court had merely engaged … Continue reading this entry

Divided Federal Circuit Remands for Construction of Claim Terms and Further Discovery

In Baron Services, Inc. v. Media Weather Innovations LLC (Fed. Cir. 2013), a divided panel of the Federal Circuit found the district court’s summary judgment ruling of noninfringement and award of attorney’s fees premature and remanded the case for further discovery and claim construction briefing. This decision provides guidance that, in cases before district courts with … Continue reading this entry