Meanwhile, the CAFC just decided a fax case, Catch Curve v. Venali.
Legal thoughts from the nonprecedential Catch Curve case:
By reciting the use of a SAFF, the storage claims, like the other asserted claims of the patents in suit, are necessarily
limited to systems that are capable of sending fax messages through fax protocol over a
switched telephone network. See Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132,
1139-40 (Fed. Cir. 2003) (limiting both method and apparatus claims “to conform with
the basis on which the invention was presented in the specification”).
However, merely omitting a step in a described process does not perforce expand the scope of the claim to
encompass the use of devices that are nothing like those described in the specification
as integral to the invention. See Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288
(Fed. Cir. 2009) (“[C]laims cannot enlarge what is patented beyond what the inventor
has described as the invention.”), quoting Networld, LLC v. Centraal Corp., 242 F.3d
1347, 1352 (Fed. Cir. 2001); see also Wang Labs., Inc. v. Am. Online, Inc., 197 F.3d
1377, 1382 (Fed. Cir. 1999) (limiting the claim term “frame” to character-based protocol,
even though “frame,” used generally, could also refer to bit-mapped displays, because
the specification described and enabled only systems using character-based protocol).
In one case in Superior Court, former Judge Mathesius told attorneys they could not
communicate via email.