Universal Remote Control, Inc. v. Universal Electronics Inc.

21 Cited authorities

CCS Fitness, Inc. v. Brunswick Corp.
288 F.3d 1359 (Fed. Cir. 2002) Cited 975 times 6 Legal Analyses
Holding that to act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning
Finisar v. Directv
523 F.3d 1323 (Fed. Cir. 2008) Cited 424 times 6 Legal Analyses
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"
Aristocrat Tech v. Intern. Game
521 F.3d 1328 (Fed. Cir. 2008) Cited 328 times 18 Legal Analyses
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
Enzo Biochem, Inc. v. Applera Corp.
599 F.3d 1325 (Fed. Cir. 2010) Cited 230 times 3 Legal Analyses
Holding that the phrase "not interfering substantially" is sufficiently definite because a skilled artisan could use "the examples in the specification to determine whether interference with hybridization is substantial"
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp.
383 F.3d 1337 (Fed. Cir. 2004) Cited 179 times 8 Legal Analyses
Holding that "[t]he answer is `no'" to the question of whether "the existence of a substantial defense to infringement [is] sufficient to defeat liability for willful infringement even if no legal advice has been secured"
Harris Corp. v. Ericsson Inc.
417 F.3d 1241 (Fed. Cir. 2005) Cited 172 times 5 Legal Analyses
Holding that while "[w]aiver is a procedural issue," the question of whether there has been "waiver of a claim construction argument . . . [is] indisputably unique to patent law"
B. B. Naturverpackungen v. Biocorp
249 F.3d 1341 (Fed. Cir. 2001) Cited 153 times
Holding district court did not err by declining to construe the term "melting" as it did "not appear to have required construction, or to depart from its ordinary meaning"
Mentor H/S, Inc. v. Medical Device Alliance, Inc.
244 F.3d 1365 (Fed. Cir. 2001) Cited 128 times 3 Legal Analyses
Holding district court did not err by declining to construe the terms "irrigating" and "frictional heat" and "relying on the ordinary meanings of these terms"
Kloster Speedsteel AB v. Crucible, Inc.
793 F.2d 1565 (Fed. Cir. 1986) Cited 164 times 4 Legal Analyses
Finding that although it is an important consideration, "not every failure to seek an opinion of competent counsel will mandate an ultimate finding of willfulness"
In re Am. Academy of Science Tech Ctr.
367 F.3d 1359 (Fed. Cir. 2004) Cited 90 times 2 Legal Analyses
Holding that descriptions of deficiencies of using mainframe computers set out in the "Background of the Invention" portion of the specification did not exclude mainframes from the definition of "'user computer'" where the "specification as a whole" did not express a clear disavowal of that subject matter
Section 112 - Specification
35 U.S.C. § 112 Cited 7,421 times 1069 Legal Analyses
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 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 103 Cited 6,173 times 493 Legal Analyses
Holding the party seeking invalidity must prove "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."
Section 102 - Conditions for patentability; novelty
35 U.S.C. § 102 Cited 6,034 times 1028 Legal Analyses
Prohibiting the grant of a patent to one who "did not himself invent the subject matter sought to be patented"
Section 311 - Inter partes review
35 U.S.C. § 311 Cited 410 times 205 Legal Analyses
Establishing grounds and scope of IPR proceeding
Section 314 - Institution of inter partes review
35 U.S.C. § 314 Cited 381 times 636 Legal Analyses
Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"
Section 42.100 - Procedure; pendency
37 C.F.R. § 42.100 Cited 192 times 75 Legal Analyses
Providing that the PTAB gives " claim . . . its broadest reasonable construction in light of the specification of the patent in which it appears"
Section 42.107 - Preliminary response to petition
37 C.F.R. § 42.107 Cited 95 times 56 Legal Analyses
Requiring initiation of IPR within six months of filing and a decision within twelve months thereafter
Section 42.108 - Institution of inter partes review
37 C.F.R. § 42.108 Cited 46 times 69 Legal Analyses
Permitting partial institution
Section 42.104 - Content of petition
37 C.F.R. § 42.104 Cited 28 times 54 Legal Analyses
Describing the content of the petition, including both "the patents or printed publications relied upon for each ground," and "supporting evidence relied upon to support the challenge"

Universal Remote Control, Inc. v. Universal Electronics Inc.

21 Cited authorities

Holding that to act as its own lexicographer, a patentee must “clearly set forth a definition of the disputed claim term” other than its plain and ordinary meaning

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"

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

Holding that the phrase "not interfering substantially" is sufficiently definite because a skilled artisan could use "the examples in the specification to determine whether interference with hybridization is substantial"

Holding that "[t]he answer is `no'" to the question of whether "the existence of a substantial defense to infringement [is] sufficient to defeat liability for willful infringement even if no legal advice has been secured"

Holding that while "[w]aiver is a procedural issue," the question of whether there has been "waiver of a claim construction argument . . . [is] indisputably unique to patent law"

Holding district court did not err by declining to construe the term "melting" as it did "not appear to have required construction, or to depart from its ordinary meaning"

Holding district court did not err by declining to construe the terms "irrigating" and "frictional heat" and "relying on the ordinary meanings of these terms"

Finding that although it is an important consideration, "not every failure to seek an opinion of competent counsel will mandate an ultimate finding of willfulness"

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

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

Establishing grounds and scope of IPR proceeding

Directing our attention to the Director's decision whether to institute inter partes review "under this chapter" rather than "under this section"

Providing that the PTAB gives " claim . . . its broadest reasonable construction in light of the specification of the patent in which it appears"

Requiring initiation of IPR within six months of filing and a decision within twelve months thereafter

Permitting partial institution

Describing the content of the petition, including both "the patents or printed publications relied upon for each ground," and "supporting evidence relied upon to support the challenge"