Category Archives: Claim Construction

Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

Author: Sean D. Damon
Editor: Jeff T. Watson

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be relied upon to support a finding of prosecution disclaimer and affirmed the district court’s grant of SJ of noninfringement to Apple. Continue reading

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Federal Circuit Trends of 2016

Authors: Alissa Lipton, Eric Raciti
Editor: Lauren J. Dreyer

Join us as we review what has been an exciting year at the Federal Circuit and help ring in 2017 with a New Year’s reception at Finnegan’s Boston office on Wednesday, January 11, 2017! We will provide insights on the top Federal Circuit decisions and trends of 2016.

Below, we highlight some of the issues we will discuss on January 11:
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What Happens When a Prevailing Party Is Still Dissatisfied with PTAB’s Claim Construction

Author: Anthony A. Hartmann
Editor: Lauren J. Dreyer

In SkyHawke Tech., LLC v. DECA Int’l Corp., No. 2016-1325 (Fed. Cir. July 15, 2016), the Federal Circuit limited a prevailing party’s ability to appeal claim construction issues in an inter partes reexamination.

After SkyHawke sued DECA for patent infringement, DECA requested inter partes reexamination, but SkyHawke ultimately prevailed on validity of its patent. Nonetheless, SkyHawke appealed to the Federal Circuit under 35 U.S.C. § 141 (pre-AIA), being “dissatisfied” with the means-plus-function construction and arguing the PTAB had created an erroneous prosecution history that could limit its enforcement rights. DECA moved to dismiss SkyHawke’s appeal for lack of jurisdiction.

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