The words that one uses in describing the invention in a patent application have significant impact as to the claim scope in any patent that might mature from the patent application. In MPHJ Technology Investments, LLC v. Ricoh Americas Corporation (Fed. Cir. February 13, 2017), a non-provisional patent application which was identical to its corresponding provisional patent … [Read more...]
A claim defines the metes and bounds of what is protected under a patent. During litigation, the parts and the courts construe and provide definitions to each of the terms and phrases recited in the claim to further refine the scope of patent protection.
Bottom line: Software patent specifications require disclosure of an algorithm for all means-plus-function limitations. Otherwise, the claim may be invalid for being indefinite. The problem may not be related solely to means limitations since a non-means limitation could be impliedly construed as a means-plus-function limitation even without using the trigger word … [Read more...]
Bottom line: The Federal Circuit construed the meaning of a phrase (i.e., a contact hole) which typically is construed to mean “one or more” to mean “two or more.” This case illustrates the fickleness of patent litigation and how the entire case could turn on not only one phrase in the claims but the varying opinions of how the judge, jury or the Federal Circuit might think a … [Read more...]
Bottom line: It may be counter-intuitive, but use of the word “invention” when drafting a patent application is a disfavored practice. For the most part, use of the word “invention” may narrow the patent protection afforded under a patent and may not broaden the scope of the claims. The reason is that if a patent repeatedly states that the invention IS X, then courts have … [Read more...]
The Federal Circuit in Takeda v. Zydus (Fed. Cir. Feb. 20, 2014) resolved issues in relation to claim construction, infringement and invalidity. The patent was directed to an orally ingestable tablet that disintegrated in your mouth where the formulation contains granules small enough (i.e., 400 µm or less) to avoid a feeling of roughness in the patient’s mouth upon … [Read more...]