Tuesday, 08 November 2011 21:32


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In a precedential opinion issued this past Friday, the United States Court of Appeals for the Federal Circuit rejected arguments that an accused device merely needs to be "capable" of being configured or programmed to perform a claimed function in order for patent infringement to occur.

The district court's construction of several disputed claim terms essentially stated that for a device to be covered by the claim term, the device as sold must actually perform, or be configured or programmed to perform, each of the functions stated in the claims. Typhoon Touch Technologies, Inc. argued on appeal that a number of the claim limitations of its patents were met if a device has the "capability" of being configured or programmed to perform the stated function, even if the device is not structured to do so as sold.

On appeal, the Federal Circuit affirmed the district court's construction of several claims terms, including, "memory for storing", "processor for executing", "operating in conjunction [with]", and "keyboardless", and as a result, affirmed the district court's judgment of non-infringement as to all Appellees and all of the accused devices.

The devices at issue in the present action comprise various smart phones and tablet style computers, and the list of Appellees is a veritable Who's Who in the industry, including Dell, Lenovo, Sand Dune Ventures d/b/a TabletKiosk, Toshiba America Information Systems, Fujitsu America, Panasonic Corporation of America, Apple, HTC America, and Palm. Appellant, Typhoon Touch Industries, Inc., is a non-practicing entity.

For the complete Federal Circuit Opinion, click here.

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John Fulton, Jr.

Mr. Fulton is a Registered Patent Attorney and Senior Counsel with Malloy & Malloy, P.L., Board Certified in Intellectual Property Law, and rated AV Preeminent by Martindale-Hubbell. His practice includes all aspects of Intellectual Property Law with a focus on patent and trademark prosecution and related transactional matters, and patent infringement litigation. He has a Bachelor of Science in Chemical Engineering from Cleveland State University, and obtained considerable engineering experience prior to receiving his law degree, with honors, from the University of Miami School of Law. In addition to the Florida Bar, he is admitted to practice in the U.S. District Courts for the Southern District of Florida, the Middle District of Florida, and the Eastern District of Texas, and the U.S. Courts of Appeals for the Eleventh and Federal Circuits. Mr. Fulton also maintains his Registration as a Professional Engineer in the State of Florida.

Mr. Fulton is an active member of the Florida Bar, and currently serves on the Intellectual Property Law Certification Committee. He is also a member of the Federal Bar and Dade County Bar Associations, and provide Pro Bono services through the DCBA’s Small Claims Clinic and Venture Law Project initiatives. He has served as an Officer and Director of the Inventors Society of South Florida, and regularly provides complimentary “Office Hour” consultations to participants at Venture Café Miami. He has also had the honor to serve as President of his Rotary Club, the Rotary Club of Miami Brickell.