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Exploring the Law of Embodiments After Phillips
The decision by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) in July 2005 reaffirmed and amplified many of the court's prior decisions addressing various aspects of patent claim construction. In particular, it emphasized the critical role of the specification in determining what the claim means and stated that the specification 'is the single best guide to the meaning of a disputed term.' While the specification provides a number of sign posts or guides to interpreting a claim, one of the most important considerations is whether and how the patentee may have limited the invention to certain embodiments or may have distinguished the invention from prior inventions. It is important, therefore, for both patent prosecutors and litigators to understand how the Federal Circuit has approached the issue of limiting claims in a post-Phillips world based on the embodiments disclosed in the specification.
In general, since Phillips the Federal Circuit has been willing to limit the claim terms of a patent: 1) when the specification referred to the proposed limitation as 'the present invention,' 2) when the specification defined 'the focus of the invention' and the claim required the proposed limitation in order to fit into the 'focus of the invention'; or 3) when the specification only disclosed certain embodiments and failed to account for alternative embodiments. In contrast, the Federal Circuit has refused to limit a claim term to the embodiments disclosed in the specification when the specification envisioned alternative embodiments not containing the proposed limitation. Accordingly, it is critical for patent prosecutors to include a specification in the application that contains, if at all possible, alternative embodiments or indicates that the disclosed embodiment is 'merely a preferred embodiment of the claimed invention.'
An example of a case addressing the first type of limitation is Honeywell Int'l v. ITT Industrials, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006), in which the Federal Circuit upheld the district court's summary judgment of noninfringement and limited the broad claim term 'fuel injection system component' to the 'fuel filter' embodiment consistently described in the specification as the 'present invention.' In affirming the district court's claim construction, the court noted that the specification's consistent use of the term 'the present invention' to describe the ”fuel filter' led to the conclusion that a fuel filter is the only 'fuel injection system component' that the claims cover.' The court also noted that the claims only covered fuel filters because '[t]he written description provide[d] only a fuel filter … No other fuel injection component with the claimed limitations [was] disclosed or suggested.' The court also limited the claim term to the disclosed embodiment, in part, because 'the written description [did] not indicate that a fuel filter [was] merely a preferred embodiment of the claimed invention.' Indeed, every time the word 'invention' was used in the patent-in-suit, it referred to a fuel filter.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Stranger to the Deed Rule
In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.