{"id":2137,"date":"2018-07-16T11:11:35","date_gmt":"2018-07-16T15:11:35","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2137"},"modified":"2018-07-29T21:03:39","modified_gmt":"2018-07-30T01:03:39","slug":"district-court-improperly-imported-limitations-into-the-claims","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2137","title":{"rendered":"District Court Improperly Imported Limitations into the Claims"},"content":{"rendered":"

In Blackbird Tech LLC v. ELB Electronics, Inc.<\/a>, [2017-1703] (July 16, 2018), the Federal Circuit vacated\u00a0judgment of noninfringement of claim 12 of U.S. Patent\u00a0No. 7,086,747 because of the district court error in construing “attachment surface” and remanded.<\/p>\n

The ‘747 patent was directed to an energy efficient lighting apparatus, and in one embodiment in particular, retrofitting\u00a0an existing light
\nfixture with a more energy efficient lighting apparatus.\u00a0 The claim required a balast cover comprising “a housing having an attachment surface\u00a0and an illumination surface.”\u00a0 The claim further required a fastening mechanism for securing the attachment\u00a0surface of the lighting apparatus\u00a0to the illumination surface.\u00a0 The district court construed \u201cattachment\u00a0surface\u201d as \u201clayer of the housing that is secured to
\nthe ballast cover.\u201d The parties disputed the meaning of \u201cattachment surface,\u201d\u00a0specifically whether the attachment surface must be\u00a0secured to the ballast cover.<\/p>\n

The Federal Circuit rejected the district court’s construction, noting that the “plain language” of the claim does not require the\u00a0attachment surface to be secured to the ballast cover.\u00a0 The Federal Circuit noted that while the claim expressly recites\u00a0a fastening mechanism for\u00a0securing the attachment surface to the illumination\u00a0surface. It does not refer to any other fastening mechanism.\u00a0It does not require the attachment surface be\u00a0secured to anything other than the illumination surface.<\/p>\n

The Federal Circuit said that the district court\u00a0nevertheless read in a second fastening\u00a0mechanism\u2014this one to secure the attachment\u00a0surface to the ballast cover.\u00a0 While an embodiment disclosed in the specification included this second fastening mechanism, the Federal Circuit did not\u00a0not\u00a0agree that this fastener limitation should be imported\u00a0into the claim.<\/p>\n

The Federal Circuit noted that there was no suggestion in the specification or prosecution\u00a0history that this fastener is important in any way\u00a0that would merit reading it into the claims.\u00a0 The specification does not refer to the disclosed fastener as\u00a0the \u201cpresent invention\u201d or \u201can essential\u00a0element\u201d or uses any other language that would cause the
\nordinarily skilled artisan to believe that this fastening\u00a0mechanism is an important component of the invention or\u00a0that it is critical to the invention for any reason.<\/p>\n

The Federal Circuit said that the most important reason not to import the limitation into the claim was that the limitation was\u00a0expressly eliminated during\u00a0prosecution — albeit to resolve 112 issues.\u00a0 The Federal Circuit rejected the defendants’ argument that the amendment was ambiguous because no explanation was given for the amendment as “legally irrelevant to how a skilled artisan\u00a0reading this history would understand the claim scope.”\u00a0\u00a0As a factual matter, no\u00a0skilled artisan would understand this claim to require a\u00a0fastening mechanism connecting the ballast cover to the\u00a0attachment surface when that very limitation was expressly\u00a0removed from the claim to secure patentability
\nwith the examiner\u2019s blessing and agreement.<\/p>\n

The Federal Circuit concluded that the district court erred in construing \u201cattachment surface,\u201d and because the court\u2019s entry of judgment of noninfringement was based on its erroneous construction, vacated the entry of judgment and remand for further proceedings.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Blackbird Tech LLC v. ELB Electronics, Inc., [2017-1703] (July 16, 2018), the Federal Circuit vacated\u00a0judgment of noninfringement of claim 12 of U.S. Patent\u00a0No. 7,086,747 because of the district court error in construing “attachment surface” and remanded. The ‘747 patent … 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-2137","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\/2137","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=2137"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2137\/revisions"}],"predecessor-version":[{"id":2138,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2137\/revisions\/2138"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2137"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2137"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2137"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}