Catalina Market. Intern. v. Coolsavings.com

Holding that "the claims, specification, and prosecution history of the041 patent demonstrate that the preamble phrase `located at predesignated sites such as consumer stores' is not a limitation of Claim 1," for "the applicant did not rely on this phrase to define its invention nor is the phrase essential to understand limitations or terms in the claim body"

Finisar v. Directv

Holding that "a competent opinion of counsel concluding either [non-infringement or invalidity] would provide a sufficient basis for [the defendant] to proceed without engaging in objectively reckless behavior with respect to the [asserted] patent"

WMS Gaming Inc. v. International Game Technology

Holding that district court correctly determined structure was "an algorithm executed by a computer," but "erred by failing to limit the claim to the algorithm disclosed in the specification"

Aristocrat Tech v. Intern. Game

Holding that in cases involving means-plus-function claims where structure is "a computer, or microprocessor, programmed to carry out an algorithm," specification must disclose corresponding algorithm to be sufficiently definite

Superguide Corp. v. Directv Enterprises

Holding that a party "waived its right to assert a construction other than 'matches or equals' for the term 'meet'" because it agreed to that construction in its briefs

Noah Sys., Inc. v. Intuit Inc.

Holding that because Noah had made the same indefiniteness arguments during claim construction before the district court, waiver did not apply

Biomedino v. Waters

Holding that "a bare statement that known techniques or methods can be used does not disclose structure"

In re Paulsen

Holding an inventor may define specific terms used to describe invention, but must do so "with reasonable clarity, deliberateness, and precision" and, if done, must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning

In re Donaldson Co., Inc.

Holding that 35 U.S.C. § 112 ¶ 6, which limits means-plus-function claims to the structures described in the specification and their equivalents, "applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court"

Function Media, L.L.C. v. Google Inc.

Holding that a specification's mere disclosure of "a computer program that transmits" is not structure as a matter of law because it is merely a non-limiting "abstraction that simply describes the function"

Section 112 - Specification

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

Section 102 - Conditions for patentability; novelty

Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"

Section 302 - Request for reexamination

Noting that a request for a reexamination must set forth the pertinency and manner of applying the prior art to the patent at issue

Section 134 - Appeal to the Patent Trial and Appeal Board

Section 41.50 - Decisions and other actions by the Board

Requiring petitioners to raise the Board's failure to designate a new ground of rejection in a timely request for rehearing

Section 1.550 - Conduct of ex parte reexamination proceedings

Discussing limited involvement of requester and third parties in re-examination proceedings