Category Archives: Preamble

DC correctly construed claims (e.g., “and” means “and/or”) but improperly denied pre-judgment interest

Posted on June 16, 2022 by Patrick J. Halloran, Ph.D., J.D.

Micheal Philip Kaufman v. Microsoft Corporation Docket No. 2021-1634, -1691 (https://cafc.uscourts.gov/opinions-orders/21-1634.OPINION.5-20-2022_1954422.pdf) DYK, TARANTO, CUNNINGHAM May 20, 2022 Brief Summary:   DC claim construction affirmed but denial of pre-judgment interest reversed. Summary:  Mr. Kaufman appealed the DC’s denial of his motion … Continue reading →

Posted in Appeal, Claim Construction, Damages, Lost Profits, Preamble, Royalties | Leave a comment

Preamble limits the claim and uCloudlink does not infringe, DC decision reversed

Posted on May 13, 2021 by Patrick J. Halloran, Ph.D., J.D.

SIMO Holdings Inc. v. Hong Kong UCloudlink Network Tech. Ltd. et al. Docket No. 2019-2411 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2411.OPINION.1-5-2021_1711937.pdf) TARANTO, CHEN, STOLL January 5, 2021 Brief Summary:  FC panel agreed preamble is limiting but also that uCloudlink does not infringe the claims, reversing … Continue reading →

Posted in Claim Construction, Infringement, Preamble | Leave a comment

DC grant of SJ to SIMO reversed without remand due to improper construction of preamble

Posted on January 13, 2021 by Patrick J. Halloran, Ph.D., J.D.

SIMO Holdings Inc. v. Hong Kong uCloudlink et al. Docket No. 2019-2411 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2411.OPINION.1-5-2021_1711937.pdf) O’MALLEY, WALLACH, TARANTO January 5, 2021 Brief Summary:  DC claim construction and grant of SJ to SIMO reversed due to improper interpretation of preamble language. Summary:  uCloud … Continue reading →

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Mark A. Barry v. Medtronic, Inc.

Posted on January 30, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2463 PROST, MOORE, TARANTO January 24, 2019 Brief summary: DC and jury conclusions of no invalidity and infringement affirmed (e.g., the invention was not in “public use” as the use was experimental, no § 102(b) on-sale bar, no … Continue reading →

Posted in Anticipation (35 USC 102), Conception and Reduction to Practice, Experimental Use, Inducement to Infringe, Inequitable Conduct, Infringement, Preamble, Public Use | Tagged | Leave a comment

Wisconsin Alumni Research Foundation (“WARF”) v. Apple Inc.

Posted on October 1, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2265, -2380 PROST, BRYSON, O’MALLEY September 28, 2018 Brief summary: DC holding that Apple infringed WARF’s patent reversed. DC grant of SJ of no anticipation affirmed. Summary: Apple appealed DC holding that it infringed WARF’s US 5,781,752 (expired … Continue reading →

Posted in Anticipation (35 USC 102), Claim Construction, Infringement, Preamble, Software | Leave a comment

Georgetown Rail Equipment Company v. Holland L.P.

Posted on August 23, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-2297 REYNA, SCHALL, WALLACH August 16, 2017 Brief summary: DC’s infringement ($1.5m awarded), claim construction (preamble is not a limitation), willfulness, and enhanced damages ($1m) conclusions affirmed. Summary: Holland appealed the DC’s infringement ($1.5m awarded), claim construction, willfulness, … Continue reading →

Posted in Claim Construction, Damages, Preamble, Willfullness | Leave a comment

Outdry Technologies Corp. v. Geox S.P.A.

Posted on July 13, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1769 (IPR2914-01244) DYK, MOORE, REYNA June 16, 2017 Brief Summary: Board obviousness decision based on reasoning adopted from Geox’s arguments affirmed. The FC panel also explained that “[t]he Board was not required to limit its motivation to combine … Continue reading →

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Preamble | Leave a comment

Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc.

Posted on February 16, 2017 by Patrick J. Halloran, Ph.D., J.D.

PGR2015-00011 (US 8,859,623 B1) Post-Grant Review Decision November 14, 2016 Brief Summary: Preamble found not to limit the claim; petition for PGR found not to show unpatentability of the claims by a preponderance of the evidence. Summary: The grounds for … Continue reading →

Posted in Inter Parties Review (IPR), IPR, Obviousness, Post-grant review, Preamble | Leave a comment

Coherus Biosciences Inc. v. Abbvie Biotechnology Ltd.

Posted on May 18, 2016 by Patrick J. Halloran, Ph.D., J.D.

IPR2016-00172 U.S. Pat. No. 8,889,135B2 May 17, 2016 Decision instituting IPR Update: See summary of May 16, 2017 FWD finding claims 1-5 unpatenable. See also July 6, 2017 FWD in IPR2016-00408 and IPR2016-00409 (both requested by Boehringer Ingelheim) finding claims … Continue reading →

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Preamble | Leave a comment

PPC Broadband, Inc. v. Corning Optical Communications RF, LLC

Posted on March 1, 2016 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2015-1364 (IPR2013-00342) MOORE, O’MALLEY, WALLACH February 22, 2016 Brief Summary: PTAB “broadest reasonable construction” of claim term found not to be “reasonable” in view of the specification. Summary: PPC Broadband appealed from PTAB IPR decision that claims 1-10 … Continue reading →

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Preamble | Leave a comment