News & Analysis as of

Intrinsic Evidence Appeals Claim Construction

McDermott Will & Emery

Sliced and Diced: Operating Manuals Are Printed Publications

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The US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s non-obviousness determination, finding that the Board erred in determining that an operating manual did not qualify as printed...more

Sheppard Mullin Richter & Hampton LLP

Sisvel International S.A. v. Sierra Wireless, Inc., No. 2022-1387, 2022-1492 (Fed. Cir. Sept 1, 2023)

This case addresses the validity of two patents asserted against wireless communications technologies. In particular, this case discusses claim construction and post-issuance claim amendments that broaden the scope of...more

McDermott Will & Emery

Context Is Key in Claim Construction

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The US Court of Appeals for the Federal Circuit reiterated that intrinsic evidence trumps extrinsic evidence in determining the meaning of claim terms. Sequoia Technology, LLC v. Dell, Inc. et al., Case Nos. 21-2263; -2264;...more

McDermott Will & Emery

Dictionaries Don’t Know Best: The Intrinsic Record Prevails (Again)

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The US Court of Appeals for the Federal Circuit addressed the tension between the intrinsic and extrinsic record in claim construction, holding that the intrinsic record should be relied on first. The Court therefore reversed...more

McDermott Will & Emery

Terms of Degree Not Always Indefinite

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The US Court of Appeals for the Federal Circuit overturned a district court determination that the claim terms “resilient” and “pliable” were indefinite. The Federal Circuit found that the claims, while broad, were...more

McDermott Will & Emery

Improper Claim Construction Requires Partial Remand of Obviousness Determination

The US Court of Appeals for the Federal Circuit issued decisions in two separate inter partes reviews (IPRs), one involving a patent related to radio frequency communication systems and the other involving a patent related to...more

McDermott Will & Emery

Rounding Error: Intrinsic Evidence Informs Plain and Ordinary Meaning

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Vacating a stipulated infringement judgment based on an incorrect claim construction, the US Court of Appeals for the Federal Circuit explained that it is improper to isolate claim language from the intrinsic evidence when...more

McDermott Will & Emery

Prosecution History Prevents Patent Owner from “Intercepting” Win on Appeal

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In reviewing whether the Patent Trial & Appeal Board (Board) correctly interpreted the meaning of “intercepting” in the context of Voice over Internet Protocol (VoIP) technology, the US Court of Appeals for the Federal...more

McDermott Will & Emery

Stick to the Fax: Conflicting Statements Made During Prosecution Lead to Indefiniteness

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In deciding whether use of the term “passive link” to define a connection between a computer terminal and a fax machine rendered a patent claim indefinite, the US Court of Appeals for the Federal Circuit affirmed the district...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Does the Term “Human Antibody” Include Humanized Antibodies?

In the context of Immunex’s patent on IL-4 antibodies, the Federal Circuit says yes. On October 13, 2020, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) final written decision in...more

McDonnell Boehnen Hulbert & Berghoff LLP

Baxalta Inc. v. Genentech, Inc. (Fed. Cir. 2020)

The Federal Circuit recently vacated a District Court decision by Federal Circuit Judge Dyk, sitting by designation, based on erroneous claim construction in Baxalta Inc. v. Genentech, Inc...more

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