Friday, July 09, 2010

Limiting claim scope based on an ad lib comment?

The final words of the decision in Telcordia v. Cisco state:

Accordingly, this court vacates the district court’s de-
nial of Cisco’s JMOL motion on invalidity of the ’306
patent and remands for determination of the validity
issue. This court also remands to allow the parties to
negotiate the terms of the royalty. In all other respects,
this court affirms.

Within the decision:

The claim construction issue on appeal in the present
case—whether the empty payload field only has bits that
act as placeholders—is different from the one in Bell
Communications—whether the empty payload field has
any bits at all. Circuit Judge Bryson’s comments, there-
fore, are not directly relevant to the specific issue in the
present case. The district court erred by limiting the claim
scope based on the ad lib comment from the bench.


By repeatedly describing the inventive DTDM
mechanism as one that only allows one packet per frame,
“the patentee has demonstrated a clear intention to limit
the claim scope using words or expressions of manifest
execution or restriction.” Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 905 (Fed. Cir. 2004) (internal quota-
tion omitted).

On means plus function claims:

Title 35 provides that “[t]he specification shall con-
clude with one or more claims particularly pointing out
and distinctly claiming the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112, ¶ 2.
For a means-plus function claim to satisfy the definite-
ness requirement, the written description must clearly
link or associate structure to the claimed function. Bio-
medino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950
(Fed. Cir. 2007). Whether the written description ade-
quately sets forth the structure corresponding to the
claimed function must be considered from the perspective
of a person skilled in the art. Intel Corp. v. VIA Techs.,
Inc., 319 F.3d 1357, 1365-66 (Fed. Cir. 2003). “The ques-
tion is not whether one of skill in the art would be capable
of implementing a structure to perform the function, but
whether that person would understand the written de-
scription itself to disclose such a structure.” Tech. Licens-
ing Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir.
2008). “While corresponding structure need not include all
things necessary to enable the claimed invention to work,
it must include all structure that actually performs the
recited function.” Default Proof Credit Card Sys. v. Home
Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed. Cir. 2005).
“A determination of claim indefiniteness is a legal conclu-
sion that is drawn from the court’s performance of its duty
as a construer of patent claims.” Personalized Media
Commc’ns, L.L.C. v. Int’l Trade Comm’n, 161 F.3d 696,
705 (Fed. Cir. 1998).

Prost in dissent:

The majority holds that one of skill in the art would
understand that the selector component is not capable of
performing the monitoring function, and by process of
elimination would deduce that the controller is the struc-
tural component of the node associated with the claimed
function. Majority Op. at 20-21. It is not enough, in my
view, that a skilled artisan can follow the clues in the
patent and solve the mystery of what structure must
perform the claimed function.
See Tech. Licensing Corp.
v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008).
Our precedent requires that the specification clearly link
a particular structure with a claimed function. See Bio-
medino, LLC v. Waters Techs. Corp., 490 F.3d 9(Fed. Cir. 2007);
Tech. Licensing, 545 F.3d at 1338.


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