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Explicit Statement In Patent Specification Does Not Limit Claims To Preferred Embodiment

Client Alert | 1 min read | 01.17.06

While the specification of a patent describes only one embodiment and explicitly states that “all routing is accomplished based on logical addresses, not physical addresses” in that embodiment, a divided Federal Circuit panel concludes that the patent claims are not limited to the preferred embodiment described in nCube Corporation (now c-Cor Inc.) v. SeaChange International, Inc. (Nos. 03-1341, -1366; January 9, 2006).

SeaChange's systems are used by cable TV networks to allow a client flexible access to various multimedia sources over a network. To receive a particular program, a client requests the program from a control manager block through a DNCS block, which subsequently routes a request for service message to the control manager block. The trial court construed the disputed term “upstream manager” in nCube's patent as a computer system component that accepts messages from a client bound for services on a server; routes messages from a client to services on a server; and is distinct from a downstream manager. After this claim construction, a jury concluded the DNCS block to constitute an “upstream manager,” and found SeaChange to have willfully infringed certain claims of nCube's patent. nCube was awarded double its actual damages and two-thirds of its attorneys fees. SeaChange contends on appeal that the upstream manager must also receive and route all messages from clients that are bound for services, and must do so using only logical, not physical, addresses, of both sender and receiver of a message.

The Federal Circuit panel majority affirms the district court judgment. While the specification of the patent at issue explicitly states that “all routing is accomplished based on logical addresses, not physical addresses,” the panel majority concludes that this statement applies only to the preferred embodiment. Despite the lack of any reference in the specification of nCube's patent to the use of physical addresses, and notwithstanding the further statement in the specification that the “network protocol of the present invention defines its own independent [logical] address space,” the panel majority finds that the trial court's claim construction was proper, and determines that there was no abuse of discretion in the damages and attorneys fees awards made.

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Client Alert | 5 min read | 12.12.25

Eleventh Circuit Hears Argument on False Claims Act Qui Tam Constitutionality

On the morning of December 12, 2025, the Eleventh Circuit heard argument in United States ex rel. Zafirov v. Florida Medical Associates, LLC, et al., No. 24-13581 (11th Cir. 2025). This case concerns the constitutionality of the False Claims Act (FCA) qui tam provisions and a groundbreaking September 2024 opinion in which the United States District Court for the Middle District of Florida held that the FCA’s qui tam provisions were unconstitutional under Article II. See United States ex rel. Zafirov v. Fla. Med. Assocs., LLC, 751 F. Supp. 3d 1293 (M.D. Fla. 2024). That decision, penned by District Judge Kathryn Kimball Mizelle, was the first success story for a legal theory that has been gaining steam ever since Justices Thomas, Barrett, and Kavanaugh indicated they would be willing to consider arguments about the constitutionality of the qui tam provisions in U.S. ex rel. Polansky v. Exec. Health Res., 599 U.S. 419 (2023). In her opinion, Judge Mizelle held (1) qui tam relators are officers of the U.S. who must be appointed under the Appointments Clause; and (2) historical practice treating qui tam and similar relators as less than “officers” for constitutional purposes was not enough to save the qui tam provisions from the fundamental Article II infirmity the court identified. That ruling was appealed and, after full briefing, including by the government and a bevy of amici, the litigants stepped up to the plate this morning for oral argument....

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