{"id":1782,"date":"2017-09-13T19:18:05","date_gmt":"2017-09-13T23:18:05","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1782"},"modified":"2017-10-02T21:52:46","modified_gmt":"2017-10-03T01:52:46","slug":"claims-cant-be-construed-contrary-to-specification-and-then-invalidated-for-being-contrary-to-specification","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1782","title":{"rendered":"Claims Can’t Be Construed Contrary to Specification, and then Invalidated for Being Contrary to Specification"},"content":{"rendered":"

In Intellectual Ventures I LLC v.\u00a0Motorola Mobility LLC<\/a>, [2016-1795](September 13, 2017), the Federal Circuit\u00a0affirm the district court\u2019s judgment\u00a0in part, reversed in part, and remanded for further proceedings
\non the asserted claims of the \u2019462 patent.<\/p>\n

A jury found the asserted\u00a0claims of 7,810,144 and 7,120,462 infringed and not invalid, and the district court denied\u00a0Motorola\u2019s motion for judgment as a matter of law.\u00a0 The Federal Circuit found substantial evidence supported the validity of the ‘144 patent, but not infringement, and that substantial evidence supported the validity and infringement of the ‘462 patent.<\/p>\n

Motorola argued that the district court erred in denying\u00a0judgment as a matter of law that the asserted claim of the \u2019144\u00a0patent was invalid for lack of written description.\u00a0 In particular, Motorola contended that the specification of the \u2019144\u00a0patent excludes \u201clong-term\u201d or \u201cpermanent\u201d storage of the\u00a0data being transmitted on an intervening computing
\ndevice, while claim 41 covers embodiments that nevertheless
\nuse such long-term or permanent storage, in violation of\u00a0the written description requirement.<\/p>\n

The Federal Circuit noted that the claim language\u00a0neither plainly includes nor plainly excludes\u00a0long-term or permanent storage, finding that the limitations\u00a0must be construed in view of the specification.\u00a0 The Federal Circuit noted that paradoxically, Motorola contends that\u00a0the specification excludes long-term or permanent storage\u00a0from the scope of the invention, while simultaneously\u00a0arguing that claim 41 should be read to cover such storage.\u00a0 The Federal Circuit instructed that the proper result is not that claim 41 fails for lack of\u00a0written description but that it should be construed \u201cin\u00a0view of the specification\u201d to be limited.\u00a0 The Federal Circuit reiterated its precedent that it is incorrect to construe the claims contrary\u00a0to the specification, and then to hold the claims invalid\u00a0because they are contrary to the specification.<\/p>\n

After concluding that substantial evidence supports\u00a0the jury\u2019s verdict of no invalidity with respect to the claim of the \u2019144 patent, the Federal Circuit turned to the question of whether\u00a0there was substantial evidence of direct infringement\u00a0under 35 U.S.C. \u00a7 271(a).\u00a0 The Federal Circuit said that\u00a0to use a system for\u00a0purposes of infringement, a party must put the invention
\ninto service, i.e., control the system as a whole and obtain\u00a0benefit from it.\u00a0 The Federal Circuit found that the district court erred when it found an infringing use based on the generalized benefit of using the accused system, rather than finding a benefit from each element of the system, and reversed the finding of infringement.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Intellectual Ventures I LLC v.\u00a0Motorola Mobility LLC, [2016-1795](September 13, 2017), the Federal Circuit\u00a0affirm the district court\u2019s judgment\u00a0in part, reversed in part, and remanded for further proceedings on the asserted claims of the \u2019462 patent. A jury found the asserted\u00a0claims … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7],"tags":[],"class_list":["post-1782","post","type-post","status-publish","format-standard","hentry","category-claim-constructino"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1782","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1782"}],"version-history":[{"count":3,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1782\/revisions"}],"predecessor-version":[{"id":1785,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1782\/revisions\/1785"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1782"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1782"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1782"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}