prosecution argument : CAFC Alert

Divided Claim Construction Leads to Reversal of Jury Verdict Against Alleged Infringer

Cindy Chen | April 17, 2013

Saffran v. Johnson & Johnson

April 4, 2013

Panel: Lourie, Moore, and O’Malley.  Opinion by Lourie. Concurrence Opinions by Moore and O’Malley.

Summary

The Federal Circuit reversed a $482 million jury verdict against Cordis, a member of the Johnson & Johnson family. The reversal came as a result of the Federal Circuit’s significant narrowing of the district court’s construction of two key claim limitations. One claim term was narrowed because the Federal Circuit found that the patentee’s arguments made during prosecution of the asserted patent, for the purpose of distinguishing over cited prior art, amounted to prosecution disclaimer. Meanwhile, a structure identified in the specification by the patentee as the corresponding structure to a means-plus-function limitation was disregarded as such, because the specification failed to link the identified structure to the recited function with sufficient specificity.


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Prosecution Argument Bars Later Recapture Through Broadening Reissue

Nicolas Seckel | August 29, 2012

Greenliant Systems, Inc. v. Xicor LLC

August 22, 2012

Panel:  Linn, Plager and Dyk.  Opinion by Dyk

Summary:

Xicor obtained a patent claiming a semiconductor device with a tunneling layer formed by low pressure chemical vapor (CVD) deposition using tetraethylorthosilicate (TEOS).   Xicor sought and obtained reissue of the patent with device claims that did not recite the use of TEOS.   Subsequently, Greenliant sued Xicor for declaratory judgment of invalidity of the reissue claims based on recapture rule, which prohibits recapture via reissue of subject matter surrendered in order to overcome prior art during prosecution of the original patent.  The District Court held the reissue claims invalid, and the Federal Circuit affirms.  Xicor had repeatedly argued during prosecution of the original patent that the product-by-process limitation of using TEOS imparted structural limitations to the final product.  This is sufficient for the recapture rule to apply, even if Xicor now recognizes that the structure of the tunneling layer does not actually depend on the material used for the CVD process, but on deposition conditions such as temperature and pressure.


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