{"id":9837,"date":"2018-07-16T10:29:41","date_gmt":"2018-07-16T16:29:41","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=9837"},"modified":"2018-07-18T12:05:11","modified_gmt":"2018-07-18T18:05:11","slug":"thirteen-years-since-phillips","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=9837","title":{"rendered":"Thirteen years since Phillips"},"content":{"rendered":"

Wow, it has already been thirteen years since Phillips<\/em> was decided (July 12, 2005). \u00a0In Part IV-B of\u00a0Phillips v. AWH Corp.<\/i>, 415 F.3d 1303 (Fed. Cir. 2005)<\/a>, the en banc majority stated:<\/p>\n

While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction. See <\/i>Nazomi Communications,<\/i> 403 F.3d at 1368-69<\/a>. Instead, we have limited the maxim to cases in which “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Liebel-Flarsheim,<\/i> 358 F.3d at 911<\/a>; see also <\/i>Generation II Orthotics Inc. v. Med. Tech. Inc.,<\/i> 263 F.3d 1356, 1365 (Fed.Cir.2001)<\/a> (“[C]laims can only be construed to preserve their validity where the proposed claim construction is `practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc.,<\/i> 214 F.3d 1302, 1309 (Fed.Cir.2000)<\/a> (“having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co.,<\/i> 849 F.2d 1430, 1434 (Fed.Cir.1988)<\/a> (rejecting argument that limitations should be added to claims to preserve the validity of the claims). In such cases, we have looked to whether it is reasonable to infer that the PTO would not have issued an invalid patent, and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent’s validity.<\/p><\/blockquote>\n

Phillips v. AWH Corp.<\/i>, 415 F.3d 1303, 1327 (Fed. Cir. 2005).<\/p>\n

So, it was interesting to read the dissent today in BLACKBIRD TECH LLC, DBA BLACKBIRD TECHNOLOGIES v. ELB ELECTRONICS, INC., ETI SOLID STATE LIGHTING INC., FEIT ELECTRIC COMPANY INC., __ F.3d __ (Fed. Cir. 2018)<\/a>, which stated:<\/p>\n

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The majority\u2019s construction thus opens the door for the \u2019747 patent to be subsequently invalidated for failure to satisfy the written description requirement. Stated differently, the majority\u2019s construction is a route towards rendering the patent invalid. See Carman Indus., Inc. v. Wahl<\/em>, 724 F.2d 932, 937 (Fed. Cir. 1983) (\u201cClaims should be so construed, if possible, as to sustain their validity. If such a construction would result in invalidity of the claims, the appropriate legal conclusion is one of noninfringement, not invalidity.\u201d). The majority likewise invites an enablement challenge; under the majority\u2019s approach, the retrofit aspect of the invention is merely an afterthought, one for which a skilled artisan must figure out for themselves the means by which the retrofit function of the invention shall be achieved, without any guidance from the patent. See Maj. Op. at 9. This result is absurd, given that when the patent is read as a whole, such guidance is clearly provided.<\/p><\/blockquote>\n

BLACKBIRD TECH LLC, DBA BLACKBIRD TECHNOLOGIES v. ELB ELECTRONICS, INC., ETI SOLID STATE LIGHTING INC., FEIT ELECTRIC COMPANY INC.<\/em>, __ F.3d __ (Fed. Cir. 2018)(slip opinion at pp. 4-5 of the dissent).<\/p>\n

It is interesting that this topic crops up from time to time. \u00a0I believe there is still a slight disagreement within the court as to whether claims should be construed to preserve their validity, regardless of ambiguity — despite what Phillips<\/em> says.<\/p>\n<\/div>\n<\/div>\n<\/div>\n","protected":false},"excerpt":{"rendered":"

Wow, it has already been thirteen years since Phillips was decided (July 12, 2005). \u00a0In Part IV-B of\u00a0Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the en banc majority stated: While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9837"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=9837"}],"version-history":[{"count":7,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9837\/revisions"}],"predecessor-version":[{"id":9844,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/9837\/revisions\/9844"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=9837"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=9837"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=9837"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}