'Whereby' Clause can Limit Scope of Method Claim.Applying well-settled principles of claim construction, the U.S. Court of Appeals for the Federal Circuit has held that the "whereby" clause of a claim limits the scope of the claim where the clause "states a condition that is material to patentability." Hoffer v. Microsoft Corp., Case No. 04-1103 (Fed. Cir. Apr. 22, 2005) (per curiam [Latin, By the court.] A phrase used to distinguish an opinion of the whole court from an opinion written by any one judge. Sometimes per curiam signifies an opinion written by the chief justice or presiding judge; it can also refer to a brief oral announcement ) (Newman, J. concurring con·cur intr.v. con·curred, con·cur·ring, con·curs 1. To be of the same opinion; agree: concurred on the issue of preventing crime. See Synonyms at assent. 2. ). Hoffer's patent describes a method for remote computer users to obtain economic index data. The claim in issue ends with a "whereby" clause that describes how the claimed method enables users to conduct interactive data messaging. Pointing to cases holding that "whereby" clauses in method claims are given no weight when they simply express the intended result of a process step positively recited, Hoffer argued that the district court should not construe construe v. to determine the meaning of the words of a written document, statute or legal decision, based upon rules of legal interpretation as well as normal meanings. the clause as a limitation. The district court disagreed, construed the clause as limiting and granted summary judgment on no infringement. Hoffer appealed. The Federal Circuit affirmed af·firm v. af·firmed, af·firm·ing, af·firms v.tr. 1. To declare positively or firmly; maintain to be true. 2. To support or uphold the validity of; confirm. v.intr. , explaining that "when the 'whereby' clause states a condition that is material to patentability, it cannot be ignored in order to change the substance of the invention." The Court concluded that the subject "whereby" clause described an interactive data messaging capability which "is more than the intended result of a process step; it is part of the process itself." The Court noted that both the "Summary of the Invention" section of the specification and portions of the prosecution history of Hoffer's patent showed the "interactive element" of the claim to be an "integral part of the invention." Addressing an unrelated issue, the Federal Circuit reversed the district court's determination that a dependent claim (which had a wrongly numbered claim dependency as a result of U. S. Patent & Trademark Office renumbering) was invalid for indefiniteness. The district court ruled it was powerless to correct even so obvious an error. The Federal Circuit disagreed, holding that in the absence of prejudice to the defendants or culpability culpability (See: culpable) on the part of the patent holder in delaying to seek a correction-and so long as the correction itself is not subject to reasonable debate-courts have the power to correct administrative errors of this sort. The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. Ms Elaine Heal McDermott Will & Emery emery: see corundum. emery Granular rock consisting of a mixture of the mineral corundum (aluminum oxide, Al2O3) and iron oxides such as magnetite (Fe3O4) or hematite (Fe2O3). 600 Thirteenth Street NW Washington, DC 20005-3096 UNITED STATES United States, officially United States of America, republic (2005 est. pop. 295,734,000), 3,539,227 sq mi (9,166,598 sq km), North America. The United States is the world's third largest country in population and the fourth largest country in area. Tel: 2027568000 Fax: 2027568087 E-mail: pdevinsky@mwe.com URL URL in full Uniform Resource Locator Address of a resource on the Internet. The resource can be any type of file stored on a server, such as a Web page, a text file, a graphics file, or an application program. : www.mwe.com Click Here for related articles (c) Mondaq Ltd, 2005 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com |
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