Johnny Lam, Associate

Publications & Media

Federal Circuit Court Decisions For Week Ending January 14, 2011

Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C. , No. 2010-1091 (Jan. 11, 2011) (precedential) U.S. Patent No. RE 38,216

Key point:

  • Because the plaintiff needed to prove patent infringement in the present case to show it would have prevailed in a prior lawsuit, patent infringement is a “necessary element” of plaintiff’s malpractice claim and the case presents a substantial question of patent law conferring jurisdiction under 28 U.S.C. § 1338.

iLOR, LLC v. Google, Inc., No. 2010-1117, 1172 (Jan. 11, 2011) (precedential) U.S. Patent No. 7,206,839

Key point:

  • In determining whether a case is “exceptional” under 35 U.S.C. § 285, it is clear error to find that a proposed claim construction is objectively baseless where the proposed claim construction is not precluded by the claim language on its face, by the specification, or by any disclaimer.

St. Clair Intellectual Property Consultants, Inc. v. Canon Inc. , No. 2009-1052, 2010-1137, -1140 (Jan. 10, 2011) (non-precedential) U.S. Patent Nos. 5,138,459, 6,094,219, 6,233,010 and 6,323,899

Key point:

  • Where an invention is uniformly characterized by the specification and/or the prosecution history as solving a specific problem, a claim limitation is properly construed to be limited to the specific problem being solved.