IP Blog
Patent Claim Interpretation
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...
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...
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...
District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime
Indefiniteness was decided in a claim construction order from the Northern District of California in VTT Technical Research Centre of Finland v. SiTime. The court corrected a claim by inserting a missing element, but also invalidated all the claims for indefiniteness because the means-plus-function element “drive or sense means” lacked sufficient structure. VTT thus won a battle but lost the...
Means-Plus-Function Construction Can Lead to Indefiniteness
In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include...
Use of Passive Voice Insufficient to Connote Structure in MPF Analysis
The District Court for the Northern District of California recently issued a claim construction order in Zoho Corporation v. Sentius International, LLC, finding that the claim limitation “means for compiling the source material image from at least the plurality of discrete pieces” was indefinite. The present action arose from a declaratory judgement action brought about by Zoho alleging that it...
Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco
In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the...
Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite
The Eastern District of Texas held that the only asserted claim of U.S. Patent No. 6,452,515 was indefinite because “the term ‘[means] for encoding these labels in a random order’” (alterations in original) invokes 35 USC § 112 ¶ 6, and “the specification of the ‘515 Patent does not disclose an algorithm for performing the encoding function required by this...
Claim Preclusion Does Not Apply to Ineligible Subject Matter: VideoShare, LLC v. Google LLC (W.D. Tx.)
The sins of the parent patent will not be visited on the child patent, at least in the Western District of Texas. An earlier determination of ineligible subject matter does not trigger claim preclusion against an infringement suit asserting a patent issued from a continuation application from the earlier patent. VideoShare, LLC v. Google LLC, Civ. No. 6-19-CV-00663-ADA (W.D. Tx....
When Are Preambles Limiting?
In his recent article Without Preamble, Stanford professor Mark Lemley surveys the morass of law on determining when patent claim preambles are limiting, and he predicts that it will be swept away if the Supreme Court ever faces the issue. Given that possibility, how should practitioners think about drafting preambles when applying for a patent? Much of legal academic literature...