Tag Archives: Claim Construction

Federal Circuit Finds "Consisting Of" Requires Reversing Infringement Of Shire Lialda Patent

The Federal Circuit focused on the “consisting of” language in the claims at issue when it reversed the district court’s finding that Watson’s ANDA product would infringe the only Orange Book-listed Shire Lialda patent. In so doing, the court emphasized the narrow scope of the Norian exception to the “closed” nature of “consisting of” language that … Continue reading this entry

Court Cites Objects Of Invention In Claim Construction

Pacing Technologies, LLC v. Garmin International, Inc. is one of those Federal Circuit decisions that may send patent practitioners running to their files to double-check the phrasing used in their patent applications. Not only did the court decide that the preamble of a claim was limiting, it held that a relatively common patent drafting technique … Continue reading this entry

Federal Circuit Issues Remand In Ten Year Reexamination Proceeding

In Tempo Lighting, Inc. v. Tivoli, LLC, the Federal Circuit vacated the decision of the U.S. Patent Office Patent Trial and Appeal Board that had reversed the Examiner’s rejection of most of the claims of the patent at issue. While the decision touches on a few important legal issues, this ten year reexamination proceeding illustrates … Continue reading this entry

Claim Construction Not Illuminated By Ambiguous Restriction Requirement

In Plantronics, Inc. v. Alph, Inc., the Federal Circuit rejected arguments that the election made in response to the Restriction Requirement limited the scope of the claims in a manner that was not reflected in the claim language, specification, or prosecution history. Although the patent holder prevailed on this issue, this case serves as a … Continue reading this entry

A Quick Look At The First Patent Trial And Appeal Board Decision In a Covered Business Method Patent Proceeding, SAP America, Inc. v. Versata Development Group, Inc.

On June 11, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first final decision in a covered business method patent (CBM) proceeding, in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001). Although this case is not in the field of pharmaceuticals or biotechnology, a few aspects of this decision will be … Continue reading this entry

Federal Circuit Uses Dependent Claims To Construe "Therapeutically Effective Amount"

In Alcon Research, Ltd. v. Apotex Inc., the Federal Circuit held that most claims of Alcon’s patent were obvious in view of prior art that suggested the use of the recited active agent to treat the recited condition, but not by the recited mechanism of action, because the prior art used a concentration of active … Continue reading this entry

Proposed AIA Implementation Rules: Citation Of Prior Art And Written Statements

On January 5, 2012, the USPTO issued a Federal Register Notice with proposed rules to implement provisions of the America Invents Act relating to the citation of prior art and written statements in a granted patent. The USPTO will consider written comments received by March 5, 2012. (The same Federal Register Notice also sets forth proposed rules … Continue reading this entry

Federal Circuit Splits Over Claim Construction

In Retractable Technologies, Inc. v. Becton, Dickinson and Company, the Federal Circuit affirmed-in-part and reversed-in-part the district court’s finding that two of Becton, Dickinson’s retractable syringes infringed Retractable’s patents. The Federal Circuit found that one, but not both, of Becton, Dickinson’s syringes infringed the patents. For many, the conflicting approaches to claim construction espoused by Judge … Continue reading this entry

USPTO Releases Examination Guidelines On "Definiteness"

On February 9, 2011, the USPTO issued “Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. § 112” and “Supplemental Information for Examining Computer-Implemented Functional Claim Limitations.” The Guidelines have immediate effect, but the USPTO will consider written comments received by April 11, 2011. 35 USC § 112, Second Paragraph The Guidelines relate primarily to the “definiteness” … Continue reading this entry

Claim Differentiation: The Weakest Link?

The recent Federal Circuit decision in ERBE Elektromedizin GMBH v. Canady Technology LLC serves as a reminder that the doctrine of claim differentiation generally will not be useful to support a claim interpretation that is contradicted by other claim construction tools. The Claims At Issue The technology at issue in ERBE relates to medical devices for argon gas-enhanced electrosurgery. … Continue reading this entry