Page 12 - Litigation

S12 | MONDAY, FEBRUARY 24, 2014 | Litigation
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‘Lighting Ballast’
•••F.3d 1369, 1370 (Fed. Cir. 2011) (Retractable II) (Moore, as having varying degrees of breadth, each term must
••••••••••••••••••••••••••
J., dissenting).
be construed to implement the invention described in
1. On Sept. 13, 2013, the Federal Circuit heard oral ar- 4. 517 U.S. 370 (1996).
the speciication. Care must be taken lest word-by-word
gument in Lighting Ballast en banc.
2. See Sinorgchem Co., Shandong v. Int’l Trade 5. 415 F.3d 1303 (Fed. Cir. 2005).
6. Id. at 1309.
deinition, removed from the context of the invention, leads to an overall result that departs signiicantly from
« Continued from page S8
Comm’n, 511 F.3d 1132, 1146 (Fed. Cir. 2007) (Newman, J, 7. Id. at 1310.
the patented invention.”).
off there that says, even when there is dissenting) (“Our appellate obligation is to impart con- 8. Id. at 1324-27.
12. MBO Labs v. Becton, Dickinson & Co., 474 F.3d
no ambiguity, we are going to use the sistency, predictability, and guidance to patent claiming, 9. Id. at 1312-15.
1323, 1329 (Fed. Cir. 2007).
speciication as the preeminent source whereby the patent-user community can rely on a tech- nologically correct and legally consistent interpretation 10. Id. at 1315.
11. See, e.g., MySpace v. Graphon, 672 F.3d 1250, 1255-
13. Microprocessor Enhancement v. Texas Instruments, 520 F.3d 1367, 1377-78 (Fed. Cir. 2008).
of meaning for the invention.19
of patent claims.”); Markman v. Westview Instruments, 52 56 (Fed. Cir. 2012); ICU Med. v. Alaris Med. Sys., 558 F.3d 14. Microprocessor Enhancement v. Texas Instruments,
F.3d 967, 978-79 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996) 1368, 1374 (Fed. Cir. 2009) (construing term “spike” to Nos. 2007-1249, -1286, Errata (Fed. Cir. April 16, 2008).
(“[I]t is only fair (and statutorily required) that com- require “an elongated structure having a pointed tip for 15. Notably, Judge Alan D. Lourie (along with Judge
Conclusion
petitors be able to ascertain to a reasonable degree the scope of the patentee’s right to exclude. They may un-
piercing the steal” based on description in speciication; Netcraft v. eBay, 549 F.3d 1394, 1397 (Fed. Cir. 2008) (con-
Pauline Newman) “joined the portion of the court’s opin- ion resolving the relative weights of speciication and
dictionaries in interpreting patent claims, in favor of the
Thus, although important in its own right, speciication.” Id. at 1328. Lourie and Newman dissent-
the Federal Circuit’s decision in Lighting Bal- ed-in-part because they disagreed with the majority’s
last likely will do little to resolve a burgeoning factual indings about the teachings of the speciication. See id. at 1329-30.
“[C]laim construction is the single most important event in the
conlict in the Federal Circuit case law which 16. See, e.g., Woodrow Woods & Marine Exhaust Sys.
pits its en banc decision in Phillips against v. Deangelo Marine Exhaust, 692 F.3d 1272, 1283 (Fed. course of a patent litigation. It deines the scope of the property
what appears to be errant panel decisions. Cir. 2012); Thorner v. Sony Computer Entm’t Am., 669 F.3d 1362, 1365 (Fed. Cir. 2012); Retractable II, 659 F.3d being enforced, and is often the diference between infringement
Until the court again addresses en banc the at 1371.
proper methodological approach for claim 17. Retractable Techs. v. Becton, Dickinson and Co., and non-infringement, or validity and invalidity.”
construction, parties will be forced to choose 653 F.3d 1296, 1305 (Fed. Cir. 2011) (Retractable I); Arling-
between the court’s en banc holding in Phil- ton Indus. v. Bridgeport Fittings, 632 F.3d 1246, 1258 (Fed. Cir. 2011) (Lourie, J. dissenting) (“The speciication is
lips or some of its more recent pronounce- the heart of the patent. In colloquial terms, ‘you should derstand what is the scope of the patent owner’s rights struing term to require providing Internet access based
get what you disclose.’”).
by obtaining the patent and prosecution history—‘the on the consistent description in the speciication that
ments, adding tremendous uncertainty to 18. See Tate Access Floors v. Interface Architectural Re- undisputed public record’—and applying established the “present invention” related to Internet access); On
the outcome determinative issue of claim sources, 279 F.3d 1357, 1366 (Fed. Cir. 2002).
19. Juxtacomm-Texas Software v. Tibco Software, No. rules of construction to the language of the patent claim in the context of the patent.”).
Demand Machine v. Ingram Indus., 442 F.3d 1331, 1344 (Fed. Cir. 2006) (“Although we agree with the district
construction.
2013-1004, Tr. 16:52-19:53 (Sept. 12, 2013).
3. Retractable Techs. v. Becton, Dickinson & Co., 659
court that each term standing alone can be construed

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