Category Archives: Indefiniteness

A Foolish Consistency may be the Hobgoblin of Little Minds, but it is the Hallmark of a Successful Applicant/Patent Owner

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In In re Walter, [2016-2256] (August 21, 2017), the Federal Circuit affirmed the PTAB’s decision in ex parte reexamination of U.S. Patent No. 7,513,711 that all twelve claims of the patent lack adequate written description and are indefinite under 35 U.S.C. § 112.

While the opinion is non-precedential, it still has a simple, but valuable lesson for applicants and patent owners.  During the reexamination Walter amended the claims (directed to artificial reefs for cultivating marine life) to require a “support structure” that was “block-like.”  The Examiner found this use of “block-like indefinite because Walter’s proposed construction conflicted with the dictionary meaning of the term “block.”  During the appeal to the PTAB and during the appeal to the Federal Circuit, Walter alternated between two different meanings of the claim term “block-like,” and therein is the lesson of the case.  If the applicant/patent owner can’t decide what a claim term means, then it is hard for the Board or a court to conclude that the term is sufficiently definite.

No-one can say whether one of the possible constructions would have satisfied 35 USC §112, but presenting two possible constructions certainly does not.

Among Other Things, the Federal Circuit Affirms Viability of Assignor Estoppel

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In Mentor Graphics Corporation v. EVE-USA, Inc., [2015-1470, 2015-1554, 2015-1556] (March 16, 2016), the Federal Circuit:

  • affirmed the jury verdict of infringement of U.S. Patent Nos. 6,240,376, the denial of JMOL, and the award of $36,000,000 in damages, and that that assignor estoppel bars Synopsys from challenging the validity of the patent.
  • reversed summary judgment that U.S. Patent No.
    6,132,109 is indefinite.
  • affirmed summary judgment that U.S. Patent No. 7,069,526 lacks patent-eligible subject matter.
  • vacated the motion in limine precluding Mentor from
    presenting evidence of willful infringement.
  • reversed summary judgment that U.S. Patent No. 6,947,882 lacks
    written description.
  • reverse summary judgment that Mentor’s infringement allegations
    regarding U.S. Patent Nos. 6,009,531 and 5,649,176 are barred by
    claim preclusion.

Regarding Assignor Estoppel, the Federal Circuit rejected Synopsys argument that the Supreme Court abolished the doctrinal underpinnings of assignor estoppel in Lear, Inc. v. Adkins.

Regarding the Damage Award, the Federal Circuit noted that the facts of this case are remarkably simple for a patent damages appeal and Synopsys does not dispute any of them.

The jury found, and Synopsys does not dispute on appeal, that Mentor
satisfied all of the Panduit factors with regard to the sales to Intel for which the jury awarded lost profits:
(1) there was a demand by Intel for the patented product; (2) there were no non-infringing alternative emulator systems acceptable to Intel; (3) Mentor had the manufacturing and marketing capability to satisfy Intel’s demand; and, (4) Mentor established the amount of profit it would
have made if Synopsys had not infringed.  Synopsys argued that the lost profits shuold be apportioned to cover only the patentee’s inventive contribution.  The Federal Circuit agreed with Synopsys that apportionment is an important component of damages law generally, and we believe it is necessary in both reasonable royalty and lost
profits analysis.  However, the Federal Circuit said that Panduit’s requirement that patentees prove demand for the product as a whole and the absence of non-infringing alternatives ties lost profit damages to specific claim limitations and ensures that damages are commensurate with the value of the patented features.

Regarding indefiniteness, the Federal Circuit said that “a method for displaying the results of synthesized circuit analysis visually near the
HDL source specification that generated the circuit” was not indefinite.The Federal Circuit held that the term “near” informs a person of ordinary skill in the art about the scope of the invention with
reasonable certainty, noting that a skilled artisan would understand “near” requires the HDL code and its corresponding circuit analysis to be displayed in a manner that physically associates the two.

Regarding patentable subject matter, the Federal Circuit held that claims containing “machine-readable medium” renders the claimed
subject matter invalid under 35 U.S.C. § 101.  The specification defined machine-readable medium as including carrier waves, found to be unpatentable in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007).

With respect to willful infringement, the Federal Circuit found the district court erred in barring evidence of willful infringement.  Specificaly, the Federal Circuit rejected a rigid rule that post-filing willful infringement cannot be presented unless the party moves for a preliminary injunction.

With respect to written description, the Federal Circuit found that there was adequate written description.  The Federal Circuit found that the very language of claim 1 which the court held was not supported by the specification was present in the originally-filed claims. Original claims are part of the original specification and in many cases will satisfy the written description requirement.

Finally, with respect to claim preclusion, the Federal Circuit said that claim preclusion does not bar later infringement allegations with respect to accused products that were not in existence at the time of the previous actions for the simple reason that claim preclusion requires that in order for a particular claim to be barred, it is necessary that the claim either was asserted, or could have been asserted, in the prior action.

 

No Disclaimer Found When Statements are Viewed in Context of Claims Pending at the Time They were Made

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In Massachusetts Institute of Technology v. Shire Pharmaceuticals, Inc., [2015-1881] (October 13, 2016), the Federal Circuit affirmed the district court’s construction of “vascularized organ tissue” and “cells derived from a vascularized tissue” and its determination that the term “three-dimensional scaffold” was not indefinite, and thus the parties stipulated to a final judgment of validity and infringement stands.

The Federal Circuit said that the doctrine of prosecution disclaimer precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution. In order for prosecution disclaimer to attach, the disavowal must be both clear and unmistakable.  Where the alleged disavowal is ambiguous, or even amenable to multiple reasonable interpretations, the Federal Circuit said that it has declined to find prosecution disclaimer.

On the first term, “vascularized organ tissue,” the district court determined that there was no clear and unmistakable disclaimer that would exclude skin from the term’s ordinary meaning, and construed the term “vascularized organ tissue” as “vascularized tissue from an organ,” reasoning that because “the dermal layer of skin contains blood vessels, this term encompasses skin,” and the Federal Circuit agreed. The Federal Circuit analyzed the statements identified by Shire in the context of the claims pending at the time they were made.  Federal Circuit determined that a skilled artisan, reading the prosecution history as a whole, would conclude that MIT’s invention does in fact cover vascularized skin.

The Federal Circuit also agreed with the district court’s construction of “cells derived from a vascularized tissue” to include both parenchymal and non-parenchymal cells, noting that the claims themselves do not make a distinction.  After reading the full prosecution history in light of the then-pending claim language, the Federal Circuit concluded that a skilled artisan would not read MIT’s statements made during prosecution — and directed to very different claim language — as limiting the term “cells derived from a vascularized tissue” to parenchymal cells.

Lastly with respect to the district court’s determination that the term “three-dimensional scaffold” is not indefinite, the Federal Circuit affirmed the district court’s claim construction and validity determination.  While Shire asserted that there was no definition of “three-dimensional,” the district court construed the term “three dimensional” according to its accepted, ordinary meaning, as confirmed by dictionary definitions. Shire complained that these were current, non-technical dictionaries, but the Federal Circuit pointed out that Shire failed to show how technical dictionaries or dictionaries contemporaneous to the patents’ filing date would define the term any differently, and in fact the definitions were consistent with Shires own experts.

 

 

Structural Element Does Not Make Method Claims Indefinite

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In Cox Communications, Inc. v. Sprint Communication Company LP, [2016-1013] (September 23, 2016), the Federal Circuit reversed the district court’s determination that the asserted claims of U.S. Patent Nos. 6,452,932; 6,463,052; 6,633,561; 7,286,561; 6,298,064; and 6,473,429 were not invalid for indefiniteness.

The parties agreed that “processing system” is not a means-plus-function
term, and confined its review to whether “processing system” renders the asserted patents indefinite under 35 U.S.C. § 112, ¶ 2.  The Federal Circuit found that the claim term “processing system” does not prevent the claims, read in light of the specification and the prosecution history, from informing those skilled in the art about the scope of the invention with reasonable certainty.

The Federal Circuit noted that the  case presented a peculiar scenario because the disputed term, “processing system,” plays no discernable role in defining the scope of the claims. The Court noted that all of the asserted claims are method claims, and
the point of novelty resides with the steps of these methods, not with the machine that performs them. The Federal Cricuit pointed out that if the words “processing system” were removed from the claims, therein meaning would not discernably change.  The Federal Circuit reasoned that if “processing system” does not discernably alter the
scope of the claims, it is difficult to see how this term would prevent the claims from serving their notice function under § 112, ¶ 2.

The Federal Circuit said that the common practice of focusing on individual terms is a “helpful tool,” but ultimately indefiniteness under § 112, ¶ 2 must ultimately turn on whether the “claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The Federal Circuit found that “processing system”
does not prevent the claims from doing just that.

Patent Drafters: Leaving Coining to the Mint

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In Advanced Ground Information Systems, Inc. v. Life360, Inc., [2015-1732] (July 28, 2016) the Federal Circuit affirmed summary judgment of invalidity of U.S. Patent Nos. 7,031,728 and 7,672,681 for indefiniteness.

At issue was the term “symbol generator” in the claims in a cellular communication system.  The Federal Circuit agreed that “symbol generator” invoked 35 U.S.C. § 112, ¶ 6, but were indefinite under 35 U.S.C. § 112, ¶ 2.

The Federal Circuit said that the failure to use the word “means” creates a rebuttable presumption that §112, ¶ 6 does not apply.  Whether §112, ¶ 6, applies depends upon whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. The Federal Circuit said that the term “symbol generator” invokes §112, ¶ 6 because it fails to describe a sufficient structure
and otherwise recites abstract elements “for” causing actions, or elements “that can” perform functions.

The Federal Circuit noted that the patentee’s expert testified that the term “symbol generator” is a term coined for the purposes of the patents-in-suit, and that it was not used in “common parlance or by persons of skill in the pertinent art to designate structure.”  While the expert testified that “symbol” and “generator” are well known terms, the Federal Circuit found that the combination of the terms as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the
function being performed (i.e., the generation of symbols).  Finally, the Federal Circuit found that the claim term “symbol generator,” by itself,
does not identify a structure by its function.

Having found that §112, ¶ 6, applies, the specification must disclose the corresponding structure or the claim in indefinte.  However, the Federal Circuit agreed with the district court that the the specifications of the patents-in-suit did not disclose an operative algorithm for the claim elements reciting
“symbol generator.” The function of generating symbols must be performed by some component of the patents-in-suit; however, the Federal Circuit said that the patents-in-suit do not describe this component.

 

Functional Language Made Claims Indefinite

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In Media Rights Technologies, Inc. v. Capital One Financial Corporation, [2014-1218] (September 4, 2015), the Federal Circuit affirmed judgment on the pleadings that all of the claims of U.S. Patent No. 7,316,033 were invalid for indefiniteness for containing means plus function elements without an identification of the corresponding structure in the specification.  At issue was the claim term “compliance mechanism” which appeared in every claim of the patent, which related to the prevention of unauthorized recording of media.

The Federal Circuit started with Nautilus’ definition of that a claim is indefinite if it fails to inform those skilled in the art about the scope of the claim with reasonable certainty.  The Federal Circuit noted that a  those skilled in the art about the t he indefiniteness — that a claim is indefinite if its language “might mean several different things and no informed and confident choice is available among the contending definitions.”

The Federal Circuit next address whether “compliance mechanism” was a means plus function element, noting that it is well settled that claim limitation that uses the word “means” invokes a rebuttable presumption that §112, ¶6 [now §112(f)] applies, and that a claim term that does not use “means” invokes a rebuttable presumption that § 112, ¶6 does not apply.  However, the presumption against the application of § 112, ¶ 6 to a claim term lacking the word “means” can be overcome if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.

Media Rights argued that “compliance mechanism” was analogous to “modernizing device” which was not a means-plus-function claim in Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011).  However the Federal Circuit distinguished Inventio because “modernizing device” described an electric circuit, which has sufficient structure, while in the present case “the claims do not use the term ‘compliance mechanism’ as a substitute for an electrical circuit, or anything else that might connote a definite structure.”  The Federal Circuit found no guidance in the intrinsic record as to what structure is being referenced. The Federal Circuit said that describing how the “compliance mechanism” is connected to and interacts with the other components of the system, what processes the “compliance mechanism” performs, and what structural subcomponents might comprise the “compliance mechanism,” were not enough.  It was the specification’s disclosure in Inventio regarding how the “modernizing device” and its internal components operated as a circuit, that connoted sufficient structure, and that was missing from Media Rights’ specification.  The Federal Circuit also distinguished Inventio as applying a heavy presumption against the application of §112, ¶6, which the Federal Circuit eliminated earlier this year.

Having determined that “compliance mechanism” was in fact a means-plus-function element, the Federal Circuit then proceeded to identifying the corresponding structure, material, or acts described in the specification to which the claim term is limited.  The Federal Circuit noted that where there are multiple claimed functions, as there are in this case, the patentee must disclose adequate corresponding structure to perform all of the claimed functions.  The Federal Circuit found that four functions were claimed, and the question is whether the specification discloses adequate structure to achieve all four of the claimed functions.

Because the functions are computer-implemented functions, moreover, the structure disclosed in the specification must be more than a general purpose computer or microprocessor, it must also disclose an algorithm for performing the claimed function.  The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.

Relying on expert testimony, the Federal Circuit found that the disclosed portions of code in the specification did not explain how to perform at least one of the claimed function, making the disclosure inadequate.  The Federal Circuit also found a lack of disclosure of the means for performing another function, finding both a lack of detail and lack of explanation.  The Federal Circuit concluded that all the claims were invalid for indefiniteness.

Media Rights suggests that after Williamson v. Citrix Online, LLC, it more likely for functional language to be found to invoke §112(f), any time that functional language is used in a claim, the drafter should weigh the risk that §112(f), and provide an identification of corresponding structure, just in case.  When the invention is implemented by computer, the drafter must include the algorithm for all of the claimed functions.

 

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