Patent claims, previously definite pre-Nautilus, are now indefinite post-Nautilus
| September 17, 2015
The Dow Chemical Co. v. Nova Chemicals Corp. (Precedential)
August 28, 2015
Before: Prost, Dyk (author), Wallach
Summary:
This decision dispels any doubt that the Supreme Court changed the law of definiteness in its decision Nautilus Inv. v. Biosig Instruments, Inc. (2014).
In 2012, under the pre-Nautilus standard (patent claim is indefinite if “not amenable to construction” or “insolubly ambiguous”), the Federal Circuit had affirmed a jury verdict of infringement and no invalidity, including no indefiniteness.
This time, under the Nautilus standard (patent claim is indefinite if “fail[ing] to inform, with reasonable certainty, those skilled in the art about the scope of the invention”), the Federal Circuit reverses an award of supplemental damages in the same case, because the same patent claims are now held indefinite.
CAFC provides guidance on Nautilus indefiniteness standard
| September 18, 2014
Interval Licensing LLC v. AOL, Inc. (Precedential)
September 10, 2014
Panel: Taranto and Chen. Opinion by Chen.
Summary:
The Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. (2014) rejected the Federal Circuit’s “insolubly ambiguous” test for indefiniteness, holding that the claim language must be capable of interpretation with “reasonable certainty” to avoid indefiniteness under 35 U.S.C. 112, second paragraph (now AIA 35 U.S.C. 112(b)).
Citing to Nautilus, but weaving in its own pre-Nautilus case law, a Federal Circuit panel affirms the District Court’s pre-Nautilus holding that claims reciting the expression “in an unobtrusive manner” are invalid for indefiniteness. Notably, the Appeals Court refuses to narrow the expression to an example of the patents’ description, in the absence of an indication in the description that the expression is defined by this example.
PTAB Finally Considers “Processor” As Clearly Structure
| June 19, 2014
Ex Parte Cutlip
June 2, 2014
Panel: Lorin, Mohanty and Hoffman.
Summary:
After the debacle of three March 2013 PTAB decisions by a five judge PTAB panel relying on a strange American Heritage dictionary definition of “processor” as being software, this PTAB decision sets the record straight about a “processor” as clearly being structure.
Tags: §101 > 112 sixth paragraph > 112(f) > abstract idea > algorithm > Alice Corp. > CLS Bank > computer > CPU > indefiniteness > MPF > patent eligible subject matter > processor > software
CAFC Reverses Trial Court’s Indefiniteness Ruling
| May 9, 2013
Biosig Instruments v. Nautilus
April 26, 2013
Panel: Wallach, Schall and Newman. Opinion by Wallach. Concurrence by Schall.
Summary
The Court of Appeals for the Federal Circuit rarely finds patent claims to be so indefinite that the they are invalid under 35 U.S.C. § 112, ¶ 2. This historical proclivity was on display last in the CAFC’s decision in Biosig Instruments V. Nautilus. There, the Court reversed a summary judgment of invalidity for indefiniteness, concluding that the claim was “amenable to construction” and not ‘insolubly ambiguous.”
Tags: claim construction > indefiniteness
Method Claim Survives Over MPF Claim’s Demise Under Aristocrat
| November 28, 2012
ePlus, Inc. v. Lawson Software, Inc.
November 21, 2012
Dyk, Prost, O’Malley. Opinion by Prost.
Summary:
This case serves as a reminder of the importance of having different claim types. ePlus’ jury verdict of infringement of two systems claims was vacated because the Federal Circuit found one means-plus-function element recited therein to lack the requisite corresponding structure being disclosed in the specification, thereby rendering the claims indefinite under 35 USC §112, second paragraph. However, the infringement of a similar method claim reciting the same function as the means-plus-function element was affirmed.
Tags: §112 > §112 sixth paragraph > Aristocrat > claims drafting > indefiniteness > means > means-plus-function
Means-Plus-Function: The Achilles’ Heel
| May 9, 2012
Noah Systems, Inc. v. Intuit, Inc.
April 9, 2012
Panel: Rader, O’Malley and Reyna. Opinion by Judge O’Malley
Summary
This decision illustrates that a patent could become invalidated even after surviving challenges of reexamination, which strengthen the presumption of validity, when a challenger discovers the Achilles’ Heel of a means-plus-function claim element resulting in a summary judgment of invalidity by the CAFC. Noah appeals the granting, by the United States District Court for the Western District of Pennsylvania (DC), of Intuit’s Motion for Summary Judgment of Invalidity of USP 5,875,435 (the ‘435 patent) based on indefiniteness for a means-plus-function claim element without the DC hearing evidence of how one of skill in the art would view the specification. The CAFC affirms by finding that the specification discloses no algorithm when the specification discloses an algorithm that only accomplishes one of two identifiable functions performed by the means-plus-function limitation.
Tags: accounting > algorithm > expert testimony > financial > indefiniteness > invalidity > means-plus-function > software > summary judgment > ThomasBrown
Computer-implemented “control means” requires description of step-by-step algorithm even if not key feature of claimed invention
| April 4, 2012
Ergo Licensing, LLC v. Carefusion 303, Inc.
March 26, 2012
Panel: Newman, Linn and Moore. Opinion by Moore. Dissent by Newman.
Summary
Another reminder that under US patent law, a “means-plus-function” element recited in a patent claim covers only the corresponding structures described in the specification and their equivalents. If insufficient or no corresponding structures are described in the specification, the claim is invalid as indefinite. The rule is strictly applied even if the functional element is only a peripheral aspect of the invention. Here, the patent claims were directed to a multichannel drug infusion system. A “control means” was recited (for controlling the motor that adjusts the drug dosage). The Federal Circuit affirms the invalidity of the claims. The specification disclosed a “control device,” but no “step-by-step process.” Since the recited function could not be performed by a general computer without special programming, disclosure of an algorithm was required to avoid “pure functional claiming.”
Tags: algorithm > computer > indefiniteness > means-plus-function
The Patent Court revisits IPXL doctrine regarding prohibition on hybrid claiming
| February 29, 2012
HTC Corporation v. IPCom GmbH & Co.
January 30, 2012
Panel: Bryson, Linn and O’Malley. Opinion by O’Malley.
Summary
HTC Corporation and HTC America, Inc. sued IPCom GmbH & Co., KG seeking a declaration that it did not infringe claims of IPCom patents. IPCom counterclaimed alleging infringement. HTC moved for summary judgment of invalidity on the ground that claims 1 and 18 of U.S. Patent No. 6,879,830 owned by IPCom were indefinite because (1) they claimed both an apparatus and method steps; and (2) the means-plus-function limitation “arrangement for reactivating,” found in the last paragraph of claims 1 and 18, was indefinite because the patent failed to disclose structure corresponding to the claimed function. On summary judgment, the district court agreed with HTC that claims 1 and 18 were indefinite based on the Federal Circuit’s precedent in IPXL Holdings, L.L.C. v. Amazon.com, Inc prohibiting hybrid claiming of apparatus and method steps in the same claim, but rejected HTC’s argument that the claims were indefinite for failing to disclose the structure corresponding to the means-plus-function limitation. On appeal, the Federal Circuit reversed the district court’s judgment of invalidity based on hybrid claiming, but did not disturb the district court’s finding regarding the means-plus-function limitation. The Federal Circuit held that the district court misconstrued the asserted claims and that the patent did not describe any improper hybrid claiming of apparatus and method steps in the same claim because the claims, when properly construed, were drawn to only an apparatus and the prohibition on hybrid claiming under IPXL was inapplicable to claims 1 and 18.
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Tags: claim construction > hybrid claiming > indefiniteness > means-plus-function > preamble-within-a-preamble
