Monday, May 07, 2012

Chicago Board Options Exchange case at the CAFC

The conclusion of the  Chicago Board Options Exchange v. ISE case states:

 We vacate the district court’s judgment of noninfringement and remand for further proceedings based on this court’s interpretation of the “system memory means,” “matching,” and “automated exchange.” We also affirm the district court’s denial of CBOE’s motions for leave to amend the Complaint.  

As to issues, the CAFC noted:

The district court erred in holding that the corresponding structure for “system memory means” included a system memory, a bid matching process, and an offer matching process.  (...) The parties expressly agreed during claim construction that “system memory means” is a means-plus-function limitation. J.A. 11. ISE may not take a different position on appeal. See Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed. Cir. 2010) (“As we have repeatedly explained, litigants waive their right to present new claim construction disputes if they are raised for the first time  after trial.”)


Construction of a means-plus-function limitation in- volves two steps. First, the court must identify the claimed function. Applied Med. Res. Corp. v. U.S. Surgi- cal Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006). Second, the court must identify the corresponding structure in the specification that performs the recited function. Id. The parties’ dispute in this case concerns only the second step.
It is well-established that the “specification must be read as a whole to determine the structure capable of performing the claimed function.” Budde v. Harley- Davidson, Inc., 250 F.3d 1369, 1379 (Fed. Cir. 2001). A “structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.” Med. Instrumentation & Diagnos- tics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003) (citation omitted). “The duty of a patentee to clearly link or associate structure with the claimed func- tion is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6.” Id. at 1211 (citations omitted). Thus, “[i]f an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention . . . .” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 (Fed. Cir. 2007) (citation omitted). Whether the specification “adequately sets forth structure corresponding to the claimed function necessitates consideration of that disclosure from the viewpoint of one skilled in the art.” Budde, 250 F.3d at 1376.


The general presumption that different terms have different meanings remains. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”).


 We have recognized that “[w]here the specification makes clear that the invention does not include a particu- lar feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be considered broad enough to encompass the feature in question.” Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1319 (Fed. Cir. 2006) (quoting SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1341 (Fed. Cir. 2001)).  (...) Indeed, the specification goes well beyond ex- pressing the patentee’s preference for a fully automated exchange over a manual or a partially automated one, and its repeated derogatory statements about the latter rea- sonably may be viewed as a disavowal of that subject matter from the scope of the Patent’s claims. Honeywell Int’l, Inc., 452 F.3d at 1319.   

The Juicy Whip case is cited:  A decision to deny a motion for leave to amend a pleading raises an issue not unique to patent law, and thus, we apply the law of the regional circuit in which the district court sits. Juicy Whip, Inc. v. Orange Bang, Inc., 382 F.3d 1367, 1370 (Fed. Cir. 2004).


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