Patently Strategic Podcast: CAFC Chronicles

The difference between getting claim construction right and getting it wrong is the difference between a valid patent and an invalid patent – and potentially the difference between millions of dollars awarded from infringement decisions vs. ending up with a worthless piece of paper. In this month’s podcast episode, we’re talking about costly tales of claim construction fails. This is the final episode in a three-part series focused on the fundamentals of patent claims and claim construction. Part one discussed the basics of claims and claim strategies. Part two laid down the essentials around claim construction. This final episode in the arc is a very practical application of it all, explored through three illustrative U.S. Court of Appeals for the Federal Circuit (CAFC) patent cases that are chock-full of actionable claim drafting insights.

Episode Overview: Costly Tales of Claim Construction Fails

Dr. David Jackrel, President of Jackrel Consulting, leads a discussion into three real-world applications for patent claim construction, as tested and decided upon by the CAFC. This is the highest court in the land under the Supreme Court for handling intellectual property disputes – and establishes much of the legal precedent the patent world has to go on … for better and for worse. The panel dissects the claims for each case, discusses the court’s analysis, and provides tips and strategies for more effective claim drafting in light of the strengths and weaknesses of the litigated patents.

These cases highlight some serious potential pitfalls in claim construction and illustrate that when interpreting claims, the plain language of the claims and the written description both matter. Therefore, claim construction requires a detailed consideration of the specification in addition to careful inspection of the claim language itself.

If the Specification Says So…

In Michael Kaufman v. Microsoft Corp. (Fed. Cir. 2022), Kaufman sued Microsoft for infringement and was awarded $7M in damages. Both parties appealed, and the infringement was affirmed by the Fed. Cir. The claim preamble contained the word “automatic” but the body of the claim did not, and the court found that the claim language permitted some human actions.

The claims also contained a list of modes with the conjunction “and,” however, the court found that, in this specific case, the word “and” can include “or.” The Fed. Cir. noted that the specification repeatedly used the word “and” in ways that clearly included “or.” You didn’t misread that. For example, the Fed. Cir. wrote that “the sole embodiment described” in one of the patents did not include all of the claimed processes, and “thus we evaluate the claim language with a strong presumption that it encompasses the situation where a mode display integrates some, but not all, of the enumerated processes.”

Plain Claim Language and Written Description

In Best Medical International (BMI) v. Elekta Inc (Fed. Cir. 2022), BMI owns patent US 6,393,096 (‘096) which has a 1999 priority date. The PTAB found ‘096 unpatentable in two inter partes reviews, stating that a person having ordinary skill in the art (PHOSITA) would have had computer programming experience. “Petitioner Elekta Inc.’s expert had that experience; Patent Owner Best Medical International Inc.’s (BMI) did not.” The CAFC dismissed the appeal of claim 1 (lack of jurisdiction) and affirmed all other considered claims as obvious after considering the relevant Graham factors.

The Graham factors included stating that “a computer” and “the computer” could be a set of computers, “based on the plain claim language and the written description.” The Fed, Cir. also clarified that claims are not limited to their preferred embodiments. In this case, the claimed phrase “conformality control factors” was determined to not necessarily be “mathematically defined parameters,” since the mathematically defined limitation did not appear in the claims, only in an embodiment described in the specification.

Incorporation by Reference of A into B Does Not Convert Invention A into Invention B

In Finjan LLC v. ESET LLC (Fed. Cir. 2022), the asserted patents were part of a family of patents directed to systems and methods for detecting computer viruses in a “Downloadable.” The district court found the asserted patents indefinite based on the word “small” as used in the court’s construction of a “Downloadable.” The Fed. Cir. reversed the district court’s claim construction, vacated the decision of indefiniteness, and remanded for further proceedings based on the new claim construction.

In this case, the district court used a definition from an earlier application in the claim construction, but the CAFC clarified that the “use of a restrictive term in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference.”

Patent Quality Series Preview

It’s impossible to overstate the significance of these concepts in terms of crafting valuable, assertable, and defendable intellectual property rights. So much so that while this episode marks the final installment of our focus directly on claims, in the coming months, we will be building on the framework laid down by this arc to go much deeper and wider on what it means to create quality patents and how the decisions you’re making now could play out later, not just in Article 3 courts like the CAFC, but also in venues like the PTAB and International Trade Commission when asserting or defending your claimed property rights.

Discussion Panel

Dave is joined today by our always exceptional group of IP experts including:

Mossoff Minute: Price Control Mania

In this month’s Mossoff Minute, Professor Adam Mossoff discusses the ill-advised price control mania presently sweeping the globe and its predictable impacts on free markets and innovation if we continue down the current path we’re precariously walking. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok (for now …).

Hiring Announcement

We’re also excited to announce that with this episode, we’re launching applications for two new roles at Aurora! Do you want to work where you want, when you want, with a great team, on cutting-edge innovations, and even get the opportunity to join us on this podcast? Of course you do, so check out the details below! These are salaried, fully remote positions with flexible work weeks and benefits. In a time when so many employers are calling their workforce back into the office for hybrid setups, there’s no better time to fully break the office chains and join a team that has been and always will be fully distributed.

Related Listening and Reading

To further explore the topics discussed, see the following past episodes and resources:



Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

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