The Federal Circuit's 2004 decision in Superguide v. DirecTV can be influential in determining the fate of a patent's validity based upon a simple test: does your claim recite "OR" or does your claim recite "AND" when listing a series of elements?
Joanna Chen
The Federal Circuit has ruled on an important issue surrounding the claim construction of a preamble of a patent claim in
Simo Holdings Inc v Hong Kong Ucloudlink Network Technology Ltd (2019-2411 (5 January 2021)). The key takeaway is that, in addition to being limiting when a claim preamble serves as an antecedent basis for a claim term appearing in the body of the claim, a preamble can also be limiting when it supplies “essential structure” and the body of the claim does not define “a structurally complete invention”.
The patent at issue, US Patent 9,736,689 (the ’689 patent), owned by SIMO Holdings Inc, describes apparatuses and methods for reducing roaming charges on cellular networks outside a home territory. SIMO sued Hong Kong uCloudlink Network Technology Limited and uCloudlink (America), Ltd (collectively, uCloudlink) for infringement. Four of uCloudlink’s products were alleged to infringe Claim 8 o
In
Simo Holdings Inc. v. Hong Kong Ucloudlink Network, Appeal No.19-2411, the Federal Circuit held that a claim construction that excludes an embodiment disclosed in the specification is proper where the claim language and intrinsic evidence sufficiently indicate that the disclosed embodiment is not within the scope of the claim.
SIMO Holdings Inc. (SIMO) sued Hong Kong uCloudlink Network (uCloudlink) for patent infringement, asserting claims directed to apparatuses and methods for reducing roaming charges on cellular networks. The parties cross-moved for summary judgment on infringement. The district court granted summary judgment of infringement and denied uCloudlink’s cross-motion based on its conclusion that one of the device components recited in the claims (a “non-local calls database”) was not required to establish infringement. The district court reasoned that the contrary construction advanced by uCloudlink “although grammatically appealing, would contradict the s