December 4, 2021

Volume XI, Number 338

Advertisement
Advertisement

December 03, 2021

Subscribe to Latest Legal News and Analysis

December 02, 2021

Subscribe to Latest Legal News and Analysis

December 01, 2021

Subscribe to Latest Legal News and Analysis

A Preamble Held Limiting Based on the Patentee’s Arguments in a Prior Appeal and File History

In Data Engine Techs. LLC, v. Google LLC, No. 21-1050 (Fed. Cir. Aug. 26, 2021), the Federal Circuit affirmed a district court’s summary judgment of noninfringement premised on the construction of a term in the preamble.

DET alleged that Google Sheets product infringes certain claims of the “Tab Patents” directed to systems and methods for displaying and navigating 3D electronic spreadsheets. The district court held that the term “three-dimensional spreadsheet” in the preamble is limiting. Based on that construction, Google Sheets was found non-infringing because it does not define cell positions in all three dimensions.

The Federal Circuit affirmed, holding that the preamble was limiting based on the particular importance DET placed on the term in a previous appeal. DET had argued that the claims were patent-eligible subject matter directed to an improvement in three-dimensional spreadsheets, placing patentable weight on the preamble term. The Federal Circuit also noted that during prosecution, the applicant defined a true “three-dimensional spreadsheet” as requiring a mathematical relation to overcome a prior art rejection. Because DET did not dispute infringement under the district court’s claim construction, the Federal Circuit affirmed.

© 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLPNational Law Review, Volume XI, Number 246
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement
Advertisement

About this Author

Associate

Shannon Patrick focuses on patent litigation related to Abbreviated New Drug Applications (ANDA), patent prosecution, proceedings before the Patent Trial and Appeal Board (PTAB), and client counseling. She has technical experience in the chemical and mechanical fields, including technologies such as aluminum alloys and joining solutions, as well as a background in biology.

Shannon’s litigation experience with district court matters includes preparing motions, managing discovery efforts, and working with expert witnesses. She has participated in...

404 653 6558
Christina Ji-Hye Yang Patent Litigation Attorney Finnegan Law Firm Washington, DC
Associate

Christina Ji-Hye Yang focuses her practice on patent litigation and client counseling in the areas of biotechnology and pharmaceuticals, with particular emphasis on Abbreviated New Drug Application (ANDA) cases.

Christina is involved in all phases of litigation, including pre-litigation analysis, fact discovery, and expert discovery. She also has experience in Section 337 litigation at the International Trade Commission (ITC) and post-grant proceedings at the Patent Trials and Appeals Board (PTAB), including inter partes reviews (IPRs). Christina has also advised clients in...

202-408-4465
Elizabeth Ferrill Patent Attorney Finnegan Law Firm
Partner

Elizabeth Ferrill is an “undisputed expert on design patents” who is “always updated and enlightening others with her deep knowledge,” “very involved in the design bar,” and “gives her clients an outstanding service” as noted in Intellectual Asset Management Patent 1000. She focuses her practice on all aspects of design patents, including prosecution, counseling, post-grant, and litigation.

Elizabeth counsels clients who hold design patents as well as those accused of infringement. She has experience with design patents related to consumer and industrial products, medical...

202 408 4445
Esther H. Lim Patent Litigation Attorney Finnegan Law Firm Washington, DC
Partner

Esther Lim has twenty-five years of experience in patent litigation, portfolio management, licensing, and counseling. She has litigated extensively before federal district courts, the International Trade Commission (ITC), and the U.S. Court of Appeals for the Federal Circuit (CAFC) in complex matters involving a wide range of technologies from electrical to mechanical to pharmaceutical. Esther served as the founding managing partner of Finnegan’s Shanghai office. She is the past president of the D.C. Bar with 110,000 members.

Over two decades of diverse professional endeavors and...

202-408-4121
Advertisement
Advertisement
Advertisement