717 Madison Place

Claim terms are generally given their plain and ordinary meanings as understood by a skilled artisan, when read in the context of the specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). In particular, claim scope can be narrowed “when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). This disavowal must be “clear and unmistakable” so as to overcome the “heavy presumption” that claim terms carry their full ordinary and customary meaning. Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1350 (Fed. Cir. 2013) (citation omitted).

FOCUS PRODUCTS GROUP INT’L v. Kartri Sales Co., 156 F. 4th 1259, 1273 (Fed. Cir. 2025)

This past week, Google was able to save countless lives in Venezuela with its earthquake detection system that displayed warnings to Venezuelans using its Android Earthquake alert system. [Link]. That reminded me of this earlier post: [Judge Chen asks: Would a method of predicting earthquakes be patent eligible?], which I will repeat below.

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Judge Chen asks: Would a method of predicting earthquakes be patent eligible?

In a recent oral argument, Judge Chen noted the confusion caused by the Federal Circuit’s §101 case law. He posited a hypothetical as to whether an earthquake prediction system should be patent eligible? You can listen to his hypothetical here:

Judge Moore chimed in that she hopes a case like that will make its way to the Supreme Court, as the Court might actually find something patent eligible and there would be a bookend.

I will add this sound bite to the audio key page for Judge Chen.

In Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., we explained that even where a particular structure makes it “particularly difficult” to obtain certain benefits of the claimed invention, this does not rise to the level of disavowal of the structure. 620 F.3d 1305, 1315 (Fed.Cir.2010). It is likewise not enough that the only embodiments, or all of the embodiments, contain a particular limitation. We do not read limitations from the specification into claims; we do not redefine words. Only the patentee can do that. To constitute disclaimer, there 1367*1367 must be a clear and unmistakable disclaimer.

Thorner v. Sony Computer Entertainment America LLC, 669 F. 3d 1362, 1366-67 (Fed. Cir. 2012).

After browsing the decision today in State of California v. Mullin that has initially struck down the $100,000 fee for H-1B visas, my mind turned to patent fees. It might be an interesting article for someone to analyze when fees imposed by an Executive Branch agency such as the Patent Office rise to the level of a tax. Two recent fee changes would be good vehicles for analysis — namely, (1) the recent fee change that increased fees for some continuation applications, and (2) the recent fee change that imposed fees for citing a large number of references. I think that would make an interesting article.

We find the district court’s concern with “what the invention is” misplaced, and its requirement that the ‘081 drawings “describe what is novel or important” legal error. There is “no legally recognizable or protected `essential’ element, `gist’ or `heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 604, 5 L.Ed.2d 592 (1961). “The invention” is defined by the claims on appeal. The instant claims do not recite only a pair of semi-circular lumens, or a conical tip, or a ratio at which the tip tapers, or the shape, size, and placement of the inlets and outlets; they claim a double lumen catheter having a combination of those features. That combination invention is what the ‘081 drawings show. As the district court itself recognized, “what Mahurkar eventually patented is exactly what the pictures in serial ‘081 show.” 745 F.Supp. at 523, 17 USPQ2d at 1357.

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.Cir.1991).

The Federal Circuit sat en banc today to hear the tariff case V.O.S. Selections, Inc. v. Trump.

A Federal Circuit panel heard oral argument today in the case of Google v. Sonos. You can listen to the oral argument here:

Joshua Rosenkranz, arguing for the patent owner, opened his argument with the statement:

“Your honors, the district court took a doctrine that this court has cautioned must be sparingly applied and stretched it to endanger standard continuation practice. If this court sustains this approach, it will fundamentally alter the norms of both patent prosecution and patent litigation.”

The Fed Circuit blog has copies of briefs for this appeal: [Link].

Update 10/8/25:

Google cannot be prejudiced by incorporating into its products a feature that was publicly disclosed in a patent application prior to its investment. Cf. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 909 (Fed. Cir. 2004) (“[I]t is not improper for an applicant to broaden his claims during prosecution in order to encompass a competitor’s products, as long as the disclosure supports the broadened claims.”); Eli Lilly & Co. v. Hospira, Inc., 933 F.3d 1320, 1334 (Fed. Cir. 2019) (explaining that, although subject matter disclosed but not claimed is generally dedicated to the public, there is an exception for subject matter “claimed in a continuation or other application”).

Google LLC v. Sonos, Inc., 2024-1097 (Fed. Cir. Aug. 28, 2025)(slip op. at 16-17).

I was experimenting with some AI-generated song software this evening. Would Federal Circuit bio pages be more interesting if they had links to AI-generated songs? For example, Judge Newman. What about judicial decisions, e.g., Chakrabarty?

It can be frustrating to run into a paywall when you are trying to access an article in a scientific journal. I was pleased to hear that at least for NIH funded research, publications of that research will soon be available for free. In this interview with the head of the NIH, this new policy was explained:

The new policy applies to manuscripts accepted for publication on or after July 1, 2025.

Yesterday, the Court of International Trade blocked the White House from using the emergency powers act to impose tariffs on foreign countries. The decision has already been appealed. Appeals from the Court of International Trade go to the US Court of Appeals for the Federal Circuit.

This begs a few questions:

1. Will the CAFC take this case en banc sua sponte? Will any judges recuse themselves?
2. While rarely used, will the CAFC expand the panel to five judges from the normal three?
3. Will the CAFC stick to its unique procedure of announcing the panel shortly before oral argument?
4. How dynamically will the stock market respond during the oral argument?
5. How many patents will be deemed non-infringed or subject matter ineligible in the decision?
6. . . . . . will the Federal Circuit issue a Rule 36 decision?