Archive | Indefiniteness

CAFC: Claim Reciting “Near” Displays of Data Not Indefinite

A patent claim that recited displaying one set of information “near” another set of information was not thereby rendered indefinite, the Federal Circuit has held in Mentor Graphics Corp. v. EVE-USA, Inc., Nos. 2015-1470, 2015-1554, 2015-1556 (Fed. Cir. March 16, 2017) (opinion by Judge Moore, joined by Judges Lourie and Chen) (precedential).  This case has […]

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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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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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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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PTAB Finds Means-Plus Function Indefiniteness

Following Williamson v. Citrix Online, LLC, the Patent Trial and Appeal Board has held means-plus-function patent claims indefinite under 35 U.S.C. § 112 for failing to “disclose sufficient corresponding structure for the [means-plus-function claim] limitation.”  Boku Account Services, Inc. v, Xilidev, Inc., Cases CBM2014-00140 and CBM2014-00148 (US Patent 7,273,168) (Nov. 2, 2015).  Even assuming the […]

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A Reminder to Patent Drafters: Consistent and Well-Defined Terminology Is Important

Because the patent specification inconsistently referred to, and failed to define, a critical claim term, the court granted a motion for summary judgment of indefiniteness under 35 U.S.C. § 112, ¶ 2, concerning claims of U.S. Patent No. 5,463,374.  Signal IP, Inc. v. Mazda Motor of North America, Inc., (C.D. Cal. Nov. 2, 2015.)  The […]

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Another Federal Circuit Lesson on Functional Software Claims

The Federal Circuit’s most recent pronouncement on functional software patent claims can only reinforce drafters’ concerns about claim language being construed as a means-plus-function recitation.  In Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 2014-1218 (Fed. Cir. Sept. 4, 2015), the court held that, under 35 U.S.C. § 112, ¶ 6, the term […]

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