A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: § 112

Counting By Argument, Rather Than By Claim, When Narrowing Claims

Andrew E. Russell, May 1, 2023
Claim Narrowing § 112

Abacus
Sami, CC BY 2.0

There was an interesting oral order from Judge Burke last week in Natera, Inc. v. CareDX, Inc., C.A. No. 20-38 (D. Del. Apr. 28, 2023). Defendant apparently asserted a large number of § 112 defenses based on lack of enablement or written description. The Court held that the defendant had to narrow it's defenses.

The parties further disputed whether the parties should count § 112 arguments by limitation or by claim. The Court held that they should be counted by claim limitation, not by claim:

With respect to the parties' dispute as to whether an argument that a claim is invalid under section 112 based on a particular claim limitation counts …
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When a "Means for" Claim Element Is Not a "Means-Plus-Function" Claim Element

Andrew E. Russell, Nov. 17, 2021
Means-Plus-Function § 112 ¶ 6

CIrcuit Board
Umberto, Unsplash

Most patent litigators are familiar with means-plus-function claims, which are defined by 35 U.S.C. § 112(f) (previously § 112 ¶ 6). They allow a patentee to write a claim limitation as a "means" or "step" for performing a function, which is performed by the corresponding structure (or material, or acts) within the specification.

Section 112 ¶ 6 can be a gold mine for accused infringers. If they successfully argue that a claim element falls under § 112 ¶ 6, they can then argue invalidity based on a lack of corresponding structure, or they can argue non-infringement if there is structure but their products lack any equivalent. Patentees usually don't want to construe their claims as § 112 …

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Physically Impossible = Indefinite

Andrew E. Russell, March 23, 2021
Indefiniteness Summary Judgment

The nailgun at issue.
The nailgun at issue. US Pat. No. 7,156,012

Judge Connolly granted summary judgment of invalidity this week, finding three claims indefinite due to their physical impossibility.

The patent relates to a faster air-powered nail gun, which uses a trigger to control the gun by providing "fluid communication"—i.e., air flow—between air valves.

All of the patent's claims involve triggers and "fluid communication" of various sorts, but defendants picked up on some weird phrasing in one independent claim:

a trigger valve exterior frame to which the main valve control channel is fluidly connected;

Defendants argued that the "exterior frame" is solid and can't be "fluidly connected" to the trigger.

Plaintiffs disagreed, arguing that a person of skill in the art would …

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