Federal Circuit Invalidates Patent Over The Inventions Set Forth In The Claims Requirement Of 35. U.S.C. § 112 ¶ 2.

The Federal Circuit's recent decision in Juxtacomm-Texas Software, LLC v. Tibco Software, Inc., Nos. 2013-1004, -1025 (Sept. 30, 2013) (nonprecedential) serves as a reminder of the vulnerability of patent claims that drift beyond the scope of what an applicant regarded as its invention:

The decisions of the district court ... construing the relevant claim language of U.S. Patent No. 6,195,662 and granting the motion for summary judgment of invalidity based on 35 U.S.C. § 112 ¶ 2, are affirmed on the basis of the district court's opinions. The language of the claims controls their construction, and the invention set forth in the claims "is not what the patentee regarded as his invention." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1349 (Fed. Cir. 2002).

The patent-in-suit disclosed a software system for converting database information from one format to another. Claims 1 and 17 both recited that the data transformation occurred "within the systems interface." However, the patent specification failed to describe any "data transformation" occurring within the "systems interface." Instead, the specification explained that the systems interface merely defined the scripts that performed the data transformation within the distribution system. The United States District Court for the Eastern District of Texas...