On November 2nd, Robert Bahr released a concise but informative memorandum that could be entitled “What We Learned From McRO and BASCOM.” I have posted on McRO, Inc. dba Planet Blue v. Bandi Namco Games America Inc. et al., 120 USPQ2d 1091 (Fed. Cir. 2016), most recently on Sept. 16th, and I refer you to that post for details of the animation software in question. BASCOM Global Internet Services v. AT&T Mobility LLC, 827 Fed. Cir. 1341 (Fed. Cir. 2016) involved software claims for filtering content received from an Internet computer network. In McRO, the Fed. Cir. found that the claims in question were not directed to an abstract idea. In BASCOM, the Fed. Cir. discussed the requirements for the elusive “inventive concept” required by the Mayo/Alice test.
Archive for the ‘Claim Construction’ Category
In re Cuozzo – Still no changes for the claim interpretation standard during inter partes review proceedingsMonday, July 13th, 2015
A guest post from Theresa Stadheim, attorney at Schwegman Lundberg & Woessner.
In In re: Cuozzo Speed Technologies, LLC, Appeal No. 2014-1301 (Fed. Cir. July 8, 2015, decision by Dyk), the Federal Circuit decided not to review the Patent Trial and Appeal Board (the “Board”) practice of construing patents under the broadest reasonable interpretation (BRI) standard.
Garmin petitioned the Board for inter partes review (IPR) of claims 10, 14 and 17 of Cuozzo’s U.S. Patent No. 6,778,074 (the ‘074 patent). Garmin contended that claim 10 was invalid as anticipated under 35 U.S.C. § 102(e) or as obvious under 35 U.S.C. § 103(a) and that claims 14 and 17 were obvious under § 103(a). Claim 10 recited:
A speed limit indicator comprising:
a global positioning system receiver;
a display controller connected to said global positioning system receiver, wherein said display controller adjusts a colored display in response to signals from said global positioning system receiver to continuously update the delineation of which speed readings are in violation of the speed limit at a vehicle’s present location; and
a speedometer integrally attached to said colored display.
In this decision—No. 2014-1396 (Fed. Cir., Feb. 18, 2015)—the court affirmed a grant of summary judgment (a copy can be found at the end of this post) that Garmin’s exercise products do not infringe the claims of Pacing’s US Pat. No. 8,101,843. The court reviewed the case de novo because the district court had relied entirely on the intrinsic evidence. The claims were directing to a systems comprising “playback devices” that the judge ruled do not play target tempo or pace information as “audio, video or visible signals,” e.g., while the user is running.
The panel affirmed that the preamble should be given weight as a claim limitation because:
“[w]hen limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.” Eaton Corp. v. Rockwell International Corp., 323 F.3d 1332 (Fed. Cir. 2003).
In Teva v. Sandoz, decided yesterday by a 7-2 decision of the S. Ct., the lengthy dissent by Justices Alito and Thomas invoked the dreaded “zone of uncertainty” – a dangerous bar of shifting legal sands that defendants should not have to cross. This legal quicksand was recently invoked in Nautilus v. Biosig to justify raising the requirements of s. 112(2) from insolubly ambiguous to reasonably certainty, and has its roots in Markman and Festo, 535 U.S. 722, 731 (2002). Justice Thomas writes:
“So damaging is this unpredictability that we identified uniformity as an ‘independent’ reason justifying our allocation of claim construction to the court… The majority’s rule provides litigants who prevail in district court to take advantage of this uncertainly by arguing on appeal that the district court’s claim construction involved subsidiary findings of fact. At best, today’s holding will spawn costly [and meritless] – collateral litigation over the line between law and fact.” Slip. op. at 16 [dissent].