Thursday, June 18, 2009

Invalidity via 112 P1 overturned because of improper claim construction

In Cartner v. Alamo, a finding that claims 5 and 12 of the ’284 patent are invalid for failure to meet the written
description requirement of 35 U.S.C. § 112 was reversed on the basis of
improper claim construction by the district court.

Of the use of the prosecution history in claim construction:

Of particular importance to the proper claim construction in this case is the
prosecution history of the ’284 patent. See, e.g., Mangosoft v. Oracle Corp., 525 F.3d
1327, 1332–33 (Fed. Cir. 2008) (finding further support for the proper construction in the
prosecution history). Contrary to the district court’s conclusion, the statements and
amendments in the prosecution history are highly explanatory about the proper
construction of “said flow control orifice being constantly operative.”

In re Baggett, the memoization case:

We agree with Baggett, however, that the Board erred by sustaining the rejection
of claims 20, 29, and 41, each of which includes the claim term “memoization.” Before
the Board, Baggett requested reconsideration of the rejection of all claims—including
claims 9, 20, 29, and 41—and Baggett argued that the examiner and the Board had
misread the claim term “memoization” as “memorization.”


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