shutterstock_69589705On May 10, 2017 and following a Patent Trial and Appeal Board (PTAB) reexamination decision upholding certain claims, the United States Court of Appeals for the Federal Circuit ruled in Cisco Systems, Inc. v. Cirrex Systems, LLC that all of the appealed claims of a fiber optic patent held by Cirrex are invalid for lack of a written description support required by 35 U.S.C. § 112.  The panel applied its own construction of a key claim term requiring that a recited functional limitation take place in a specific location which the specification failed to describe.

Continue Reading You Can Not Claim What you Don’t Possess – Federal Circuit Holds Fiber Optic Claims Invalid under Section 112

Business_CheckList2On April 22, 2016, a three judge panel of the United States Court of Appeals for the Federal Circuit, consisting of Judges Prost, Dyk and O’Malley, affirmed a district court’s decision to dismiss as moot a patent case involving only cancelled claims.

In Target Training Int’l, Ltd. v. Extended DISC North America, Inc., Case Nos. 2015-1873,  2015-1908, Plaintiff Target Training International, Ltd. (“TTI”) accused Extended DISC North America, Inc. (“EDNA”) of infringing U.S. Patent No. 7,249,372 (the “’372 Patent”) directed to  processing and distributing reports over a network in response to receiving input from a user.

After the lawsuit commenced, EDNA’s franchisor, Extended DISC International Oy Ltd (“EDI”) requested ex parte reexamination of all the claims (1-11) of the ’372 Patent.  The U.S. Patent and Trademark Office (“USPTO”) granted the request and the litigation was ultimately stayed pending the resolution of the reexamination.  Before the stay was entered, however, TTI had served its preliminary infringement contentions asserting claims 1, 2 and 5-11 of the ’372 Patent against EDNA.

Continue Reading Failure to Update Infringement Contentions with New Reexamination Claims Fatal for Patentee