The database has been updated through September 13, 2006. It now contains all 749 claim construction opinions of the Federal Circuit since Markman I (April 1995).

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Using a particularly awkward approach to claim construction, a federal circuit panel today holds that where an applicant offers a claim amendment that is rejected by the examiner, and the applicant abandons that amendment, the scope of the pre-amended claims is diminished. See Automed Technologies, Inc. v. Knapp Logistics & Automation, Inc., et al., No. 06-1587, (May 31, 2007) (affirming summary judgment of noninfringement).

The claims at issue in Automed Technologies are directed to a system for automatically filling prescription drug orders and generally involve receiving a prescription order, moving a vial, filling a vial, and labeling a vial. Slip op. at 2. The issue of infringement, according to the opinion, turns on whether the steps have to proceed in any particular order.

At the outset, the court concedes that the “claims alone” do not require any specific order, slip op. at 3. According to accepted tools of claim interpretation, the court then examines the written description portion of the patent document and the prosecution history to determine whether these sources might impose an order on the steps recited in the claims—which is where the opinion starts to get confusing.

In a confusing opinion that might have been better off as a nonprec the federal circuit reversed a district court claim construction and corresponding summary judgment of noninfringement in a case involving washing machine outlet boxes. See Oatey Co., v. IPS Corp., 2007-1214 (January 30, 2008).

It is hard to tell what a district judge faced with a claim construction is supposed to learn from this opinion.

The Federal Circuit added another claim construction reversal to its precedent with its opinion in TriMed, Inc. v. Stryker Corp., 2007-1327 (January 29, 2008) (appeal from a summary judgment of noninfringement).

The opinion, authored by Judge Moore, takes a district judge to task for reading a claim that used the term “means” as a means-plus-function claim and therefore subject to interpretation under 35 U.S.C. §112 para. 6 (“such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof”).

In a case involving digital video recorder (DVR) technology, the federal circuit affirmed a damages award of roughly $74 Million against Echostar. See TiVo, Inc. v. EchoStar Communications Corp., 2006-1574 (January 31, 2008).

In Sitrick v. Dreamworks, LLC, 2007-1174 (February 1, 2008) (appeal from summary judgment), the federal circuit agreed that a number of claims in two patents should be invalidated for lack of enablement.

The invention described in U.S. Patent Nos. 5,553,864 and 6,425,825 involves integrating a user’s audio signal or visual image into a pre-existing video game or movie. Two sorts of claims involved. The dispute over the first concerns whether the claims encompass the use of the invention in the context of movies, and, if they do, whether claims of such scope would be enabled. The dispute over the second sort concerns whether claims require modeling a voice for reproduction by a voice synthesizer, and if so, whether claims with such scope would be enabled. In both cases, the court answered in the affirmative with respect to claim scope, and in the negative with respect to enablement.

Using a procedural approach to claim construction, and a somewhat dubious assertion concerning its prior interpretation of the claim phrase “an insert,” the federal circuit held that the claim phrase “an insert” imposes a process limitation. More interesting still, perhaps, is a signal provided in a lengthy footnote that there are members of the court who may be prepared to defend Cybor.

Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 2006-1628 (February 6, 2008) (affirming a summary judgment of noninfringement in favor of a declaratory plaintiff) involves the use of tubular inserts to make baseball or softball bats. According to the court, the patent involved (U.S. Patent No. 5,415,398) describes inserting a tubular insert into the interior of the bat in the area where the bat normally impacts a ball. The use of an insert produces a gap between the insert and the exterior wall of the bat. This technology, according to the court’s description, “adds 'snap' to the rebound of the bat after coming into contact with a ball, and thus 'yields an improved transfer of power to the batted ball, and a heightened ‘slugging’ capacity for the bat.' Id. col.3 ll.36–47.” Slip op. at 2-3.