Indefiniteness : CAFC Alert

There must be a Clear and Compelling Reason to Construe a Claim Term in a Way Other than its Ordinary Meaning

| March 19, 2014

Ancora Technologies v. Apple

Decided March 3, 2014

Before Chief Judge RADER, Circuit Judges TARANTO and CHEN. Opinion by Circuit Judge TARANTO.


Ancora stipulated that its patent was not infringed by Apple’s iOS operating system, in view of the trial judge’s narrow construction of the term “program” in Ancora’s patent claims.  Ancora appealed the judge’s claim construction.  Apple cross-appealed the judge’s construction of two other claim terms, “volatile memory” and “non-volatile memory” in the context of the judge’s determination that the claim terms were not indefinite.

The CAFC agreed with Ancora on both issues and remanded the case to the lower court for further proceedings.


Ancora’s patent claimed a method for determining whether software on a computer is authorized, and if not, taking remedial action.  A significant feature of the claimed method is that encrypted license information is stored in the computer’s basic input/output system (BIOS), where that information is less vulnerable to hacking than when stored in other types of memory space, as in the prior art. 

Representative claim 1 recited

A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:

selecting a program residing in the volatile memory,

using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,

verifying the program using at least the verification structure from the erasable nonvolatile memory of the BIOS, and

acting on the program according to the verification.

Apple argued, and the trial judge agreed, that in view of the specification and the prosecution history, the claim term “program” would be understood by one skilled in the art as “an application program,” i.e., a program that relies on an operating system to run but is not itself an operating system, specifically “a set of instructions for software application that can be executed by a computer.”   


The CAFC recited the principle of law that each claim term is given ordinary meaning in the context of the claimed invention, unless the applicant has clearly adopted a different meaning or clearly disclaimed the literal scope of the claim.  Here, one in the art would understand that “program” in the context of computers include application programs and operating systems that run application programs, plus other types of programs.  They are not limited to application programs.

Further, the recitation of “application software program” in another claim in the asserted patent suggests that the applicants did not intend the bare term “program” in representative claim 1 to have the same meaning.   

The specification refers to the programs to be verified as “software programs,” “software” and “programs” without limiting them to application programs.  Examples in the specification do refer to “application programs,” but they are non-limiting examples. 

Apple’s reliance on applicants’ statements during prosecution of the patent were also unpersuasive. Those arguments distinguishing prior art, “concerned software that implemented the invented method. The to-be verified software is different from the verifying software. The statements from the prosecution history on which Apple relies do not say that the program being verified must be an application program.” (Emphasis added).   

The CAFC also affirmed the trial judge’s rejection of Apple’s defense that the claims were indefinite because of the claim phrases “volatile memory” and “non-volatile memory.”  The CAFC began by noting the agreement among the parties and the lower court that the phrases are well-understood in the art: “to one of ordinary skill in the art, a volatile memory is memory whose data is not maintained when the power is removed and a non-volatile memory is memory whose data is maintained when the power is removed.” 

The CAFC acknowledged certain “loose wording” in the specification regarding these phrases, but the panel found that “the terms at issue have so clear an ordinary meaning that a skilled artisan would not be looking for clarification in the specification. There is no facial ambiguity or obscurity in the claim term. Moreover, the specification nowhere purports to set out a definition for ‘volatile’ or ‘non-volatile’ memory, and nothing in it reads like a disclaimer of the clear ordinary meaning.” (Emphasis added). 


Of course, drafters need to be careful in their use of claim terminology.  Nonetheless, where claim terms are quite well understood in the relevant art, courts will not apply those terms in a manner contrary to their common understanding, unless the applicant clearly intended to redefine the term or clearly disclaimed a portion of the literal scope of the claim. 

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.


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.”

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Applicant’s failure to request claim construction under §112, 6th paragraph may invoke waiver of such claim construction

| January 23, 2013

In re Avid Identification Systems, Inc.

January 8, 2013

Panel:  Lourie, Clevenger and Bryson.  Opinion by Lourie.  Dissent by Clevenger.


The Examiner rejected claims of a patent at issue, and the PTO board maintained the rejection finding that a means-plus function limitation was found in prior art where its broadest reasonable meaning was given.  CAFC affirmed the PTO decision, and denied the Applicants’ request for a claim construction under § 112, 6th paragraph, instead of the broadest reasonable interpretation.  CAFC reasoned that the Applicants waived that claim construction by failing to raise the issue during the procedure in the PTO.  The dissenting opinion pointed out that the claim construction according to § 112, 6th paragraph is mandatory as the statutory requirement where the claim term clearly invokes the application of § 112, 6th paragraph.

出願人はクレームが自明であるとして拒絶した特許庁審判部の判断を不服として、CAFCに控訴した。問題のクレームには、ミーンズプラスファンクション(”means for”の用語を用いた限定 )を記載がある。そのような記載があると通常、特許法112条第6パラグラフの適用があり、その機能限定は明細書に開示されている構造もしくはそれと均等な構造を記載していると限定解釈される。しかしながら、本件では、特許庁審査官および審判部は、そのミーンズプラスファンクションの限定を、一般的な構造限定のときのように合理的な範囲で最も広い意味(broadest reasonable meaning)の基準を用いて解釈した。この広い解釈に基づいてその機能限定は先行技術に記載されていると特許庁は判断した。この経緯に関してCAFCは、出願人は特許庁の手続きにおいて112条第6パラグラフの適用を自ら主張しなかったためその機会を放棄したと判断し、出願人の主張を退けた。CAFC裁判官の1人は、112条第6パラグラフの適用は制定法上の要求であり、出願人や審査官が同法に基づく限定解釈を要求しなくても先ずその解釈を採用すべきであるとの反対意見を述べた。

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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.


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.

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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


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.

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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.


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.”

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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.


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., 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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More on Typhoon: Knowledge in the Art as a Factor in Determining Sufficiency of Corresponding Algorithm

| January 4, 2012

Since the CAFC was relatively quiet last week due to the holidays, this week we revisit Typhoon, which we discussed in our post last week.  In the second half of this case, the CAFC continued their review of the district court’s claim interpretation.  The CAFC reviewed the MPF claim term “means for cross-referencing responses to said inquiries with possible responses from one of said libraries.”  The CAFC chose to emphasize a 1985 case, Shatterproof Glass, in indicating that the amount of detail required in the specification is related to the existing knowledge in the field of endeavor.

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Means-Plus-Function Claims – “Algorithm” can be expressed in any understandable terms including in prose

| December 28, 2011

Typhoon Touch Technologies, Inc. v. Dell, Inc. et al.

CAFC, November 4, 2011

Panel: Rader, Newman, Prost.  Opinion by Newman


The United States District Court for the Eastern District of Texas held the patents in suit invalid and not infringed.  On appeal, the CAFC affirmed the district court’s rulings concerning the claim terms “memory for storing,” “processor for executing,” “operating in conjunction,” and “keyboardless.”  However, CAFC reversed the district court’s ruling that the claim term “means for cross-referencing” is indefinite for failing to satisfy the requirements of 35 U.S.C. Section 112 ¶ 2.  CAFC disagreed with the district court and held that the term “means for cross-referencing” is supported by the “structure, materials, or acts” in the specification.


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