Archive | Section 112

PTAB Construes Patent Claim Terms as Subject to §112 ¶6 in IPR

The USPTO’s PTAB held that the term “drive module” was a means-plus-function limitation subject to 35 U.S.C. § 112, sixth paragraph (now 112(f))  in its decision to institute an Inter Partes Review (IPR) in Apple Inc., v. Immersion Corporation, IPR2016-01372 (January 11, 2017). The PTAB (Patent Trial and Appeal Board) raised the §112(6) issue sua […]

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PTAB Upholds Indefiniteness Rejection of Inferentially Claimed Element

One of the first rules often taught to a young patent attorney, especially for mechanical apparatus claims, is to avoid inferential claiming, i.e., avoid introducing a new element in the middle of a recitation of another element.  This type of drafting can lead to ambiguity about whether this new term is positively recited, and thus […]

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PTAB Indefiniteness Standard Is Different than the Federal Circuit’s

In Telebrands Corp. v. Tinnus Enterprises, LLC, PGR2015-00018 (Dec. 30, 2016), the PTAB found the phrase “substantially filled” indefinite under 35 U.S.C. § 112(b) on post-grant review (PGR). In the course of reaching this conclusion, the PTAB (Patent Trial and Appeal Board) explained that the USPTO uses a different standard than the federal courts to […]

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Federal Circuit Says a Seemingly Subjective Claim Term Is Not Indefinite under 35 USC § 112

The Federal Circuit has reversed the Northern District of Illinois’ conclusion that the phrase “visually negligible” renders a patent claim invalid under 35 U.S.C. § 112 as indefinite.   Sonix Technology Co., LTD. v. Publications International, LTD, No. 16-1449 (Fed. Cir. Jan. 5, 2017).  The district court’s ruling should hardly have come as a surprise since […]

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Post Grant Review and Section 112: A Curious Case

In a case where it strikingly relied on prior art sharing a specification with the patent at issue, the USPTO’s Patent Trial and Appeal Board (PTAB) invalidated the patent on several grounds, including lack of written description and enablement under 35 U.S.C. § 112. US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-00019 (PTAB December […]

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Federal Circuit Holds Coined Phrases to Be Means-Plus-Function, and Indefinite

In Advanced Ground Information Systems, Inc. v. Life360, Inc., No. 2015-1732 (Fed. Cir. July 28, 2016), the Federal Circuit cautioned against coining verbal nouns and phrases without specifying sufficient structure or algorithms in the patent specification. The court affirmed a finding of indefiniteness of claims of U.S. Patent Nos. 7,031,728 and 7,672,681, and held the […]

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When Is a Patent Claim Indefinite for Encompassing Two Statutory Classes of Invention (e.g., System and Method)?

Patent claims can recite the functionality of a system or apparatus without being indefinite under 35 U.S.C. § 112 for encompassing two statutory classes (e.g., system and method), the Federal Circuit has explained in UltimatePointer, LLC v. Nintendo Co., Ltd., No 2015-1297 (Fed. Cir. March 1, 2016). Thus, the three-judge panel (Judge Lourie wrote for […]

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Some Guidance on Means-Plus-Function Language

Two recent district court opinions provide some guidance for predicting whether claim language will invoke a means-plus-function construction. Invoking means-plus-function isn’t as straight forward as it used to be. It’s well known that claiming “means for” is all but certain to invoke a means-plus-function construction. Things get trickier when that phrase is omitted, however. And […]

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Learning from a Finding of Indefiniteness at the Patent Trial and Appeal Board

A recent decision from the Patent Trial and Appeal Board (PTAB) provides a lesson in avoiding indefiniteness under 35 U.S.C. § 112(b). In In re Hyde, Appeal 2013-003305, Application 12/387,151 (PTAB Nov. 4, 2015), the Applicant appealed prior art rejections under 35 U.S.C. §§ 102(b) and 103 only to have these grounds of rejection mooted […]

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