Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

 

In claim construction, the claim language and the specification generally carry greater weight than does the prosecution history.

HTC Corp. et al. v. IPCom GMBH & Co., KG, No. 2011-1004 (Fed. Cir. Jan. 30, 2012).

The alleged infringers sued the patentee in 2008, seeking a declaration that the alleged infringer’s products did not infringe the patent. The patentee counterclaimed, alleging infringement. The alleged infringer moved for summary judgment of invalidity on indefiniteness grounds. The alleged infringer argued that the claims were indefinite because they covered “hybrid” claims covering apparatus and the methods did not recite sufficient structure to perform the claimed functions. The district court granted the motion concluding that the asserted claims were indefinite as they covered “hybrid” subject matter. The district court rejected the argument that the claims did not recite sufficient structure.

On appeal, the Federal Circuit reversed the district court’s grant of summary judgment. Focusing on claim construction, the court indicated that the district court failed to adhere to the principles of claim construction set forth in Phillips v. AWH Corp. by placing too much emphasis on the prosecution history. The claim language and the specification generally should carry greater weight than the prosecution history. Applying the proper claim construction, the court concluded that the claims covered only an apparatus, were not “hybrid” claims, and hence were not indefinite.

As to the argument that the claims lacked sufficient structure, the Federal Circuit agreed with the district court that the patent’s specification adequately disclosed, to one of skill in the art, structures for use in performing the functions in the asserted claims. The Federal Circuit concluded that the district court erred in assuming that this structure provided sufficient basis for the functional limitations of the asserted claims. The court indicated that the asserted claims also required an adequate algorithm to perform the claimed function. The Federal Circuit, however, found that the alleged infringer waived the argument by failing to raise it before the district court.

A copy of the opinion can be found here.

 

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