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...]
Claim Construction
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.
Claim scope negatively impacted due to deleted info from provisional application
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...]
Fickleness of patent litigation turns on a single letter in claim
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...]
Using the word INVENTION may narrow your patent protection
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...]
Claim construction when claims recited in terms of size
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...]
Use of intrinsic record guides patent claim construction
The scope of patent protection for a patent is defined by claims which are located at the end of the patent. One of the difficulties in determining whether infringement occurs revolves around patent claim construction which determines the meaning of terms or language in the claims. As you might suspect, claim terms can have different meanings to different people. However, … [Read more...]
Follow your profits to determine direction of your patenting efforts
In Lifescan v. Shasta (Fed. Cir. 2013), the patent owner sold machines and consumables separately. The machines were blood glucose meters, while the consumables were test strips for the blood glucose meters. The patent owner sold the machine at a loss (40% of the time) or gave them away for free (60% of the time) expecting that they would profit on the sales of the test … [Read more...]
Be clear in drafting claims
Clarity is one of the basic goals for claim drafting. The patent application is a tool to explain terms used in the claims. A response to an official action of the Patent Office revolves around the claims. The following case is an example of a claim which was not clear. The claim language at issue was “a release means for retaining …” Baran v. Medical Device Technologies, … [Read more...]