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Todays prosecution practice tip: dont use the phrase the present invention in the specification

By McKee, Voorhees & Sease, P.L.C.

pIn a decision last week, the a href=http://www.cafc.uscourts.gov/ title=United States Court of Appeals for the Federal CircuitFederal Circuit/a affirmed a district court#39;s claim construction and its related summary judgment of noninfringement.nbsp; The district court held the applicable claim term was narrower than the quot;lay understandingquot; of the term, based on the specification.nbsp; Because the specification was clear, the district court refused to consider the prosecution history in the claim construction analysis./ppThe Federal Circuit agreed that the specification supported the district court#39;s narrower reading of the term, noting the specification repeatedly characterized as quot;the present inventionquot; the narrower understanding of the term.nbsp; The court also noted that while it must consider the prosecution history, the prosecution history was quot;not particularly helpful to either party#39;s claim construction position.quot;nbsp; As a result, the Federal Circuit affirmed the district court#39;s claim construction.nbsp; Because it was undisputed there was no infringement under this construction, the court also affirmed the summary judgment of noninfringement. /ppMore detail of emNetcraft Corp. v. eBay, Inc. /emafter the jump./pp [More]

Full post as published by FileWrapper on December 18, 2008 (boomark / email).