IP Blog
The Claims Interpreted Report
Federal Circuit Upholds District Court Inventorship Ruling
In Tube-Mac Indus. v. Campbell, the Federal Circuit upheld a district court ruling mandating a correction of inventorship for US Patent 9,376,049. While nonprecedential, the Federal Circuit opinion nonetheless provided a refresher on requirements of inventorship and the standard used when inventorship is challenged. The ‘049 patent is directed toward a container for transporting refrigerated gaseous fluids and originally named...
Federal Circuit Again Address Whether “A” is a Singular-Only or Plural-Allowing Interpretation: ABS Global, Inc. v. Cytonome/ST, LLC
In ABS Global, Inc. v. Cytonome/ST, LLC, No. 22-1761 (Fed. Cir. Oct. 19, 2023), the Federal Circuit determined that the PTAB erred in its claim construction of a limitation common to all challenged claims (claims 1, 2, 6, 8, and 9) of U.S. Patent No. 10,583,439 (“the ‘439 patent”). Ultimately, the court reversed the Board’s written decision with respect to...
Federal Circuit Affirms Grant of Summary Judgement Relating to Invalidity for Lack of Enablement Using Amgen Reasoning: Baxalta Inc. v. GenenTech, Inc.
In Baxalta Inc. v. GenenTech, Inc., No. 2022-1461 (Fed. Cir. Sep. 20, 2023), Baxalta Inc. and Baxalta GmbH (“Baxalta”) appealed from the U.S. District Court for the District of Delaware a grant of summary judgement that claims 1-4, 19, and 20 of U.S. Patent No. 7,033,590 (“the ‘590 patent”) are invalid for lack of enablement. The Federal Circuit affirmed. Baxalta...
Fed. Cir. Focuses on the Facts in PTAB Appeal
The saga between Apple and Corephotonics continues in Corephotonics, Ltd. v. Apple Inc. where the Federal Circuit vacated and remanded final decisions of the PTAB concluding that challenged claims of 9,661,233 (“’233 patent”), 10,230,898 (“’898 patent”), 10,326,942 (“’942 patent”), and 10,356,332 (“’332 patent”) (collectively, the “Challenged Patents”) are unpatentable as obvious. In vacating the decisions, the Federal Circuit point to...
Fed. Cir. Claim Construction Focuses on Meaning of “A”
In Apple v Corephotonics, the Federal Circuit vacated and remanded a final decision of the PTAB holding that Apple failed to show that challenged claims of U.S. Patent No. 10,225,479 were obvious. Curiously, the Federal Circuit relied on patentee’s use of “a” when conducting claim interpretation of “a point of view (POV) of the Wide camera.” The ‘479 patent is...
Prosecution Disclaimer Pitfalls
In Speedtrack, Inc. v. Amazon.com, Inc. (June 3, 2021), the Federal Circuit affirmed not only the district court’s findings relating to patent infringement, but also the importance of prosecution history when interpreting the claims. More specifically, the Federal Circuit affirmed a finding that Amazon.com et al. (“Amazon”) did not infringe U.S. Patent No. 5,544,360. The finding of infringement hinged on whether...
Attacking Individual References of an Obviousness Combination
In re: CSP Technologies (Fed. Cir., Jan. 21, 2021) is a nonprecedential opinion that nevertheless provides us with a good excuse to discuss In Re Keller, 642 F.2d 413 ( CCPA 1981) which is cited from time-to-time by Examiners during patent prosecution. This case is an appeal of an ex parte PTAB decision for US Patent Application No. 12/992,749. The...
Does a “Plurality A, B, and C” Require More than One A, More than one B, and More than One C?: An Interpretation of Disjunctive and Conjunctive Phrases
SIMO Holdings v. Hong Kong uCloudlink Network (Fed. Cir., Jan. 5, 2021) is a precedential opinion that touches on an interesting claim interpretation topic regarding disjunctive and conjunctive phrases. Independent claim 8 is at issue: 8. A wireless communication client or extension unit comprising a plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module...
Adjectives in Claim Construction
Comcast Cable Communications v. Promptu Systems Corporation (Fed. Cir., Jan. 4, 2021) is a nonprecedential opinion but nevertheless still provides an example of claim construction based on a modifying adjective. The Appellant appealed the IPR final-written decision in which the PTAB held Appellant failed to prove that the challenged claims of US7,260,538 would have been obvious. The claim term “command...
How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn
A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means. SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury...