Case ClIPs

Allowed Claim Amendments Do Not Ensure Written Description Support

In Mondis Technology Ltd. et al. v. LG Electronics Inc. et al., Nos. 2023-2117, 2023-2116 (Fed. Cir. Aug. 8, 2025), the Federal Circuit held that there is no presumption that claim amendments made during prosecution that result in allowance are supported by adequate written description. View
Federal Circuit Reverses PTAB on Anticipation, Remands Obviousness

The Federal Circuit, in SIGRAY, INC. V. CARL ZEISS X-RAY MICROSCOPY, INC., 137 F.4th 1372 (Fed. Cir. May 23, 2025), reversed the PTAB’s anticipation holding and remanded the PTAB’s obviousness decision. View
Fed. Cir. Vacates $300M Verdict Against Apple

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Federal Circuit Clarifies Meaning of “Consisting Essentially Of”

In this case, the Federal Circuit held that, depending on context such as prosecution history, amending patent claims to use the transitional phrase “consisting essentially of” may limit the claims to exclude other elements that do not materially affect the basic and novel properties of the invention as claimed. View
Fed. Cir. Invalidates Atorvastatin Hemicalcium Salt Claim

Federal Circuit reversed the decision of the district court and invalidated dependent claim 6 directed to the hemicalcium salt of atorvastatin because claim 6 depended from parent claim 2 limited to atorvastatin acid.View
Federal Circuit Holds that Extrinsic Evidence May Not be Used to Contradict the Language in the Specification

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Federal Circuit Holds That a Trademarked Feature May Be Functional

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During Claim Construction, Claims are to be Interpreted by Looking at Claim Language, Specification, Prosecution History, and, Where Relevant, Extrinsic Evidence

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Federal Circuit Holds That Functional Claim Limitations Can Have a Functional Construction That Does Not Specify the Physical Boundaries of Such Limitations

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Federal Circuit Reviewed the District Court’s Decision Invalidating Asserted Claims as Ineligible Subject Matter Under § 101

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Federal Circuit Held the Specification May Describe Numerous Embodiments Which Do Not Limit a Claim Term to a Meaning Narrower than What is Ordinarily Provided

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Claim Construction with Imaginary Commas

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Federal Circuit Holds That Even If No Explicit Claim Construction Took Place, If the Outcome of the Analysis of the Claim Term Establishes the Scope and Meaning of the Patented Subject Matter, Claim Construction Most Likely Occurred

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Federal Circuit Holds that a Claim Containing Both a Broad Limitation and a Narrower Limitation Within the Broad Limitation Is Not Indefinite, So Long as It Is Possible to Satisfy Both the Broad and Narrow Requirements

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The Federal Circuit Held that One-Off Statements May Not Limit Claim Interpretation On Their Own, but Must Be Viewed in Context as a Part of the Whole File

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The Federal Circuit Held that Mere Submission of Office Actions of an Unrelated (but commonly owned) Patent in an IDS Does Not Cause an Applicant to Adopt Statements in Those Office Actions, and is an Insufficient Basis to Limit Claim Scope.

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The Federal Circuit held that a lack of approximation language in a claimed range is not dispositive and may leave room for ambiguity which can require consideration of extrinsic evidence to determine the bounds of the claim.

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Federal Circuit holds that claim terms can be construed in reliance on their dictionary definition, when such construction is not inconsistent with the intrinsic evidence.

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Federal Circuit affirmed the ITC’s ruling that an open-ended claim may be construed to have a more limited, enabled scope, if the open-ended claimed range has an inherent upper limit.

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Federal Circuit Holds that Interference Proceedings Cannot be Applied to Pure AIA Patents and Applications

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Federal Circuit Holds that Use of Open-ended Terms in the Specification (e.g. “including”) Does Not Allow for Claim Construction Including Non-disclosed Embodiments

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Federal Circuit Explained that Introduction of “A” Claim Element Followed by Recitation of “Said” Characteristics of that Element, Requires at Least One Element Having all of the Recited Characteristics

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Federal Circuit Affirmed the PTAB’s Ruling that the Petitioner has the Burden of Proof to Show that a POSA Would Equate Features from the Prior Art to Claim Features

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Federal Circuit Affirmed the PTAB’s Ruling that Claim Terms Should Not be Limited to a Disclosed Preferred Embodiment and Clarified that the PTAB May Expand on a District Court’s Claim Construction Where Necessary to Resolve a Dispute

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