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recent decision in Juxtacomm-Texas Software, LLC v. Tibco Software, Inc., Nos. 2013-1004, -1025 (Sept. 30, 2013) (nonprecedential) serves as a reminder of the vulnerability of patent claims that drift beyond the scope of what an applicant regarded as its invention: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 found Juxtacomm’s argument during summary judgment briefing that invalidity required an "irreconcilable contradiction" too strict and concluded that all that was necessary was a ”logical inconsistency or contradiction between the claims and the specification.” In light of the contradiction between the specification and the claim language, claims 1 and 17 were found invalid pursuant to 35 U.S.C. § 112 ¶ 2.

While succeeding on a theory of invalidity under 35 U.S.C. § 112 ¶ 2 can be difficult, Juxtacomm demonstrates that invalidity theories under § 112 ¶ 2 are, for defendants, well worth pursuing and plaintiffs should therefore be careful not to discount the potential impact of challenges to validity under § 112 ¶ 2.