Non-dispositive claim construction arguments

Sometimes the Federal Circuit seems to send mixed messages.  In the oral argument of Cradle IP, LLC v. Texas Instruments, Inc. that took place on December 2, 2014, Judge Dyk chastised the appellant for challenging claim constructions by the district court that were unnecessary for reviewing the judgment in the case.  [Listen].  However, yesterday in Lexington Luminance, LLP v., Inc., Judge Lourie writing for the court noted:

On appeal, Lexington challenges all five constructions. Amazon asks us to decline review because those constructions are unrelated to the invalidity judgment. In the alterative, Amazon argues that those constructions should generally be affirmed.

Under our precedent, we have the discretion to review a non-dispositive claim construction in the interest of judicial economy, if the construction may become important on remand. Interval Licensing, 766 F.3d at 1376 (citing Deere & Co. v. Bush Hog, LLC, 603 F.3d 1349, 1357 (Fed. Cir. 2012); Advanced Software Design Corp. v. Fiserv, Inc., 641 F.3d 1368, 1378 (Fed. Cir. 2011)). Because we now vacate the invalidity judgment and remand for further proceedings at the district court, we address the claim construction issues raised by the parties.

By the way, the Cradle IP v. Texas Instruments case is a “configuration” case. So, even though the Federal Circuit issued a rule 36 decision, the oral argument recording has some discussion of Nazomi, Typhoon Touch, and other configuration cases. There was no mention of Finjan, however.

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