GE LIGHTING SOLUTIONS, LLC v. AGILIGHT, INC. (Fed. Cir. 2014) (P) – Claim interpretation to include preferred embodiment

by Steve Driskill | May 1, 2014 | [sub] importing limitations, Claim Interpretation

It is normally improper to construe claims in a manner that would exclude the preferred embodiment, especially where it is the only disclosed embodiment. In particular, “where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to...

BRAINTREE LABORATORIES, INC. v. NOVEL LABORATORIES, INC. (Fed. Cir. 2014) (P) – Claim term definitions in the specification

by Steve Driskill | Apr 22, 2014 | [sub] importing limitations, Claim Interpretation

A definition section in the specification will almost certainly be taken as controlling, even, as here, where it contradicts the preferred embodiment. If used at all, extra care and attention should be taken to draft definitions only to the extent absolutely...

BUTAMAX(TM) ADVANCED BIOFUELS v. GEVO, INC. (Fed. Cir. 2014) (P) – Definition sections in the specification

by Steve Driskill | Feb 18, 2014 | [sub] importing limitations, Claim Interpretation

Although the patentee ultimately prevailed with a broader construction, the use of a definition section in the specification will almost certainly be taken as the requisite clear intent to redefine a given term, and any narrowing statements imported into the claims....

PFIZER INC. v. TEVA PHARMACEUTICALS USA (Fed. Cir. 2014) (NP) – Clearly distinguishing specific examples from the claimed invention at large

by Steve Driskill | Feb 6, 2014 | [sub] importing limitations, Claim Interpretation

It is helpful to clearly distinguish any specific examples given in the specification from the claimed invention at large to avoid conflating the narrower examples with the more generic claim language. For example, the reporting of test results only directed to a...

MIKKELSEN GRAPHIC ENGINEERING v. ZUND AMERICA (Fed. Cir. 2013) (NP) – Limiting claims to preferred embodiments

by Steve Driskill | Aug 16, 2013 | [sub] importing limitations, Claim Interpretation

The court reiterated here its position that “[t]he use of a specific embodiment for illustrative purposes does not impliedly exclude other embodiments.” It is also at least noteworthy that the court highlighted and lent credence to the use of a boilerplate disclaimer...

ARIA DIAGNOSTICS, INC. v. SEQUENOM, INC. (Fed. Cir. 2013) (P) – Limiting claim terms beyond their ordinary meaning

by Steve Driskill | Aug 8, 2013 | [sub] importing limitations, Claim Interpretation

It is “not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit a claim term beyond its ordinary meaning.” Even if a specification has only one embodiment, its claims will not be confined to that example “unless the...