Subscribe and Connect

Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

Send questions, comments and suggestions to

« False Marking - Over 500 Suits Filed in 2010; New Bill Proposed to "Fend Off" Such Suits | Main | Defendant Appeals Denial of Motion to Dismiss False Marking Complaint for Failure to Adequately Plead Intent to Deceive »

Federal Circuit Reverses Claim Construction and Finds Claim Obvious Over Prior Art

Lucky Litter LLC v. ITC (Fed. Cir. Oct. 6, 2010) (nonprecedential)

In this case, the Federal Circuit reversed the ITC's claim construction and found the claim at issue obvious over the prior art.  The patent was a reissue patent concerning self-cleaning cat litter boxes.

The ALJ construed the claim term "an automatic operation position wherein the comb moves toward the discharge position automatically upon the occurrence of a predetermined event" to mean "a position of the mode selector switch where combing is initiated in response to a cat exit."  The Commission declined to review this decision.  Lucky Litter argued on appeal that such a construction "conflicts with the plain language of the claim, which refers to a predetermined event, not to a cat exit."  Lucky Litter also pointed the Court to the request for reissue where the patentee stated "recitations regarding a cat exist sensor and a delay means where are too limiting of the invention."  The Commission responded that the specification "distinguishes the invention over the prior art in terms of cat exit" and broadening the claim would jeopardize the validity of it by encompassing the prior art. 

The Federal Circuit determined that neither the claim nor the specification limited the "predetermined event" term to a "cat exit."  The Court explained that "nothing in the specification clearly and unmistakably disavows predetermined events other than cat exit."  The Court also found that the prosecution history "shows that patentee viewed his invention more broadly" and added the claim at issue during reissue to not contain a limitation of "sensing exit of a cat from the litter chamber."

The Court then performed a validity analysis and found the claim obvious over the prior art.