January 8, 2021 Will La Salle 0 Comments

Words matter. Whether defending against an infringement claim, laying liability for a personal injury claim, or claiming the innovative concept behind a new invention. Communication is a funny thing, and the English language can often be imprecise. The care in which words are chosen and employed can make or break a patent owner’s infringement prosecution.

The US Court of Appeals for the Federal Circuit (CAFC) made this clear in SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., No. 2019-2411, 2021 U.S. App. LEXIS 137 (Fed. Cir. Jan. 5, 2021). In this case, claim 8 includes language in the claim preamble claiming a plurality of computer devices and programming “stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database…” The alleged infringer, uCloudlink’s, technology utilized substantially the same configuration of devices and performed the same function. However, when defending its technology, SIMO could not point to uCloudlink’s use of non-local calls database(s). This made all the difference between a summary judgment for the defendant on appeal from the district court’s award of summary judgment for the plaintiff.

The patent attorney or agent who drafted this claim likely did not consider that the language in the claim’s preamble (a claim’s preamble contains a general description of all the elements or steps of the claimed combination which are conventional or known; see MPEP § 608.01(i)(e)(1)) would be construed as containing a necessary limitation to the substance of the claim as a whole. See further, MPEP § 2111.02. Many attorneys or agents likely would have taken the same position. An inventor trying to capture the essence of his invention by filing a patent on her own would have no reason to even consider it.

Patent attorneys and agents familiar with claim construction know what I’m talking about. But to the general layman (and certainly to the skilled inventor nonetheless not versed in the law) the preceding paragraph is likely just gibberish. Preambles? Limitations? And what is the substance of the claim as a whole, and what does the preamble have to do with it? These are the kinds of questions that Intellectual Property attorneys are familiar with and consider every day. Although it may not seem like it, the answers to some of these questions can give an inventor a whole new perception on what his inventive concept really is. Maybe the innovation is smaller in scope than it seems; sometimes, the light bulb goes off a second time and the full gravity of the invention is realized for the first time only when trying to capture the conceptualization in words.

Don’t put your inventions, trademarks, and copyrights at risk by trying to go it alone. The USPTO is a labyrinth full of misleading paths and dead-ends that can get you all spun up. And worse, the slightest misstep opens the door for competitors to swoop in and profit off of your hard work and effort. Don’t let that happen. Bring your invention to the Glow In The Dark Lawyer™, and let me help you turn your ideas into money-making, protected innovations on the marketplace.

For more on SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., No. 2019-2411, 2021 U.S. App. LEXIS 137 (Fed. Cir. Jan. 5, 2021), see attorney Rebecca Tapscott’s IPWatchdog article here.

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