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Avoid Indefiniteness: Define Claim Terms

The Federal Circuit has held that a patent claim term construed under 35 U.S.C. § 112 is indefinite where, although the claim term encompassed a concept that was well known in the art, that concept was embodied by a class of algorithms, and therefore it was unclear what specific algorithm was contemplated.  Triton Tech of […]

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Should Nautilius v. Biosign Instruments Change How Patent Applications Are Drafted?

A patent claim is invalid for indefiniteness if it cannot be construed by one of ordinary skill in the art with “reasonable certainty,” the U.S. Supreme Court has unanimously held in Nautilus, Inc. v. Biosign Instruments, Inc., No. 13–369 (June 2, 2014).  The Court thus replaced the Federal Circuit’s “insolubly ambiguous” standard, which risked creating […]

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Financial Business Method Claims Held Not Patent-Eligible (and Invalid for Indefiniteness)

The clear trend of district courts invalidating business method patent claims has continued in Intellectual Ventures I, LLC v. Capital One Financial Corp., No. 1:13-cv-00740 (E.D. Va. April 16, 2014).  Further, the court provided some lessons for claim drafters in holding claims of one patent invalid for indefiniteness under 35 U.S.C § 112. Intellectual Ventures […]

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Patent Invalidity for Indefiniteness When a Claim Recites Two Statutory Classes

A patent claim directed to a “computer readable medium encoded with computer program for performing contextual searches on an Internet Phone (IP) phone” was held invalid under 35 U.S.C. § 112, ¶ 2, as indefinite because the claim recited user actions in the context of steps that otherwise functionally limited the claimed apparatus. H-W Tech., […]

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Full Scope of Patent Claims Must Be Enabled at the Time of Filing

The headline of this post, a truism of patent law to be sure, is nicely illustrated by the Federal Circuit’s opinion in Convolve, Inc. v. Compaq Computer Corp., No. 2012-1074 (July 1, 2013). After an inventor admitted in testimony that he had been unable to implement claimed subject matter in certain contexts until nine years […]

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Federal Circuit Reaffirms Software Means-Plus-Function Requirements

In keeping with other cases discussed by this blog addressing whether software “means” recited in patent claims have been adequately disclosed, the Federal Circuit recently affirmed a district court’s invalidation of patent claims for indefiniteness because the patent specification did not disclose an algorithm to support the recited means. Function Media, L.L.C. v. Google Inc., […]

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Means-Plus-Function Claims Indefinite Without Supporting Algorithm

If a claimed means requires programming to carry out a specified function, then a patent specification must disclose an algorithm to support the claimed means. Absent such disclosure, means-plus-function claim elements are indefinite, and render a patent claim invalid under 35 U.S.C. § 112, according to the court in Microsoft Corp. v. Motorola Inc., No. […]

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“Substantially Centered” Not Indefinite in Patent Claim

The phrase “substantially centered” does not render a patent claim indefinite under 35 U.S.C. § 112, according to the court in the ongoing Apple-Samsung patent litigation. Apple, Inc. v. Samsung Elecs. Co., No.: 11-CV-01846-LHK (Jan 29, 2013, N.D. Cal.). At issue was claim 50 of U.S. Patent No. 7,864,163 (reproduced in full at the end of […]

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Patent Claims Indefinite: No Structure Supports Recited Software Means

The Federal Circuit has held patent claims indefinite under 35 U.S.C. § 112 where the claims recited “means for processing,” but the patent specification failed to disclose any structure that performed the recited means. Eplus, Inc. v. Lawson Software, Nos. 2011-1396, -1456, -1554 (Fed. Cir. Nov. 21, 2012). This case continues a line of Section […]

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Software Means-Plus-Function Claims Held Indefinite

Software patent claims were held indefinite under 35 U.S.C. § 112 where the patent specification failed to provide any algorithm for performing the recited function.  Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, No. 10-5378 (D. N.J., Sept. 5, 2012).  The claims recited “computational means” and thus were means-plus-function claims within the ambit of 35 U.S.C. […]

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