Last month on §101: You Win Some (Amdocs), You Lose Some (FairWarning; Synopsys)
| November 21, 2016
Amdocs (Israel) Limited v. Openet Telecom, Inc.
November 1, 2016
Before Newman, Plager, and Reyna. Opinion by Plager. Dissenting opinion by Reyna.
Summary
A trio of Federal Circuit decisions on patent eligible subject matter in the past month offers additional guidance on how to survive scrutiny under 35 U.S.C. §101. The focus will be on Amdocs (Israel) Limited v. Openet Telecom, Inc., in which the Federal Circuit found eligibility, but for the sake of comparison, the Federal Circuit’s decisions in FairWarning IP, LLC v. Iatric Systems, Inc. and Synopsys, Inc. v. Mentor Graphics Corporation, in which the Federal Circuit reached the opposite conclusion, will be briefly summarized.
CAFC reiterates criteria for disavowal of broad claim scope based on patent’s disclosure and prosecution history.
| November 2, 2016
Poly-America, L.P. v. API Industries, Inc.
October 14, 2016
Before Prost, Reyna, and Hughes. Opinion by Reyna
Summary
Infringement of Poly-America’s patent hinged on construction of “short seal” in claim 10. Based on the specification and prosecution history, the district court adopted the accused infringer’s proposed construction, which incorporated structure described in the specification but not explicitly recited in the claim. The CAFC affirmed, finding clear and unequivocal statements in the specification and prosecution history “that the inventor intended to limit the claimed invention to a trash bag with ‘short seals’ at its upper corners that extend inwardly to narrow the bag’s upper opening,” and thus disavowed a broader interpretation.
