In Enfish, LLC. V. Microsoft Corp., the Federal Circuit reversed the district court’s summary judgment of invalidity under §101 (subject matter) and §102 (anticipation). In reviewing the lower court’s decision, the Federal Circuit focused analysis on the first part of the Alice Corp. test for determining patent-eligible subject matter. The Federal Circuit placed particular emphasis on the first step of the two-part test: Are the claims directed to an abstract idea? The Federal Circuit noted that the “formulation [of the test] plainly contemplates that the first step of the inquiry is a meaningful one, i.e., that a substantial class of claims are not directed to a patent-ineligible concept.”
In Eon Corp. v. Silver Spring Networks, the Federal Circuit reversed a finding of infringement, identified a failure to construe “portable” and “mobile,” and directed entry of a judgment of non-infringement based on a proper construction of the plain and ordinary meaning of mobile and portable.
What This Means to You
- Interpretation of plain and ordinary meaning of claim terms is conducted in view of the specification.
- Ambiguous examples may not support broader claim scope, especially where detailed examples provide support for a narrower interpretation of the claims.
- Explicitly claim all your embodiments and, if possible, keep continuation applications pending to provide an opportunity to resolve ambiguity.