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ARTICLE · 05 NOVEMBER 2014

During Claim Construction, Neither Importing Limitations From Nor Reading Out A Preferred Embodiment Is Proper

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The Federal Circuit vacated the district court’s constructions of four claim terms and the district court’s SJ of noninfringement under the DOE.

United StatesIntellectual Property
Karthik Kumar, Ph.D.
Karthik Kumar, Ph.D.
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In EPOS Technologies Ltd. v. Pegasus Technologies Ltd., No. 13-1330 (Fed. Cir. Sept. 5, 2014), the Federal Circuit vacated the district court's constructions of four claim terms and the district court's SJ of noninfringement under the DOE. The Federal Circuit also reversed the district court's SJ of noninfringement for certain of the patents-in-suit and remanded to the district court.

EPOS Technologies Ltd. ("EPOS") filed suit against Pegasus Technologies Ltd. ("Pegasus"), seeking DJ of noninfringement of U.S. Patent Nos. 6,326,565 ("the '565 patent"); 6,392,330 ("the '330 patent"); 6,724,371 ("the '371 patent"); and 6,841,742 ("the '742 patent"). Pegasus counterclaimed for infringement of U.S. Patent Nos. 6,266,051 ("the '051 patent") and 6,501,461 ("the '461 patent"). The patents relate to pens that digitize writing and devices for retrofitting writing surfaces so that writing can be digitally captured. After claim construction, EPOS moved for SJ of

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