“Protocol Module” Deemed Indefinite for Lack of Structure

The District Court for the Northern District of California recently handed down a claim construction order in Microchip Technology Incorporated v. Nuvoton Technology that held the claim limitation “protocol module” was indefin… Read More

Claim Term “Important” Leads to Indefiniteness

The Eastern District of Texas recently invalidated several patent claims that the court had found indefinite in a separate claim construction ruling in the case Uniloc 2017 v. Samsung. Interestingly, the court found the claim term… Read More

Claims Combing a System and a Method for Using the System are Invalid for Indefiniteness Under § 112

During a Markman patent claim construction proceeding, the Western District of Texas ruled multiple claims of U.S. Patent No. 7,284,203 invalid for indefiniteness under 35 U.S.C. § 112 because the claims “improperly combine sys… Read More

§ 112 Enablement and Written Description in Post-Grant Review

When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics… Read More

Practical Application Saves Software Claims in PGR

The Patent Trial and Appeal Board recently upheld eligibility of claims in a post-grant review, relying on the USPTO’s 2019 Patent Subject Matter Eligibility Guidance (but writing just before the October 2019 update to the USPTO… Read More

112 and the Zone of Uncertainty

In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C.… Read More

Details Matter for Patent-Eligibility (and Other Bases for Patent Validity)

An important lesson for patent drafting – disclose and claim as much detail as you can about how the invention works, as opposed to simply what it does – falls out of a Federal Circuit panel’s split decision holding patent-i… Read More

“Circuit For” Interpreted as Means-Plus-Function

Even without the word “means,” claims can be interpreted as means-plus-function, as demonstrated by the Central District of California in a decision in Limestone Memory Systems v. Micron Technologies. The court interpreted the… Read More

Indefiniteness Challenges Hinge On Textual Support

Whether a court holds a patent claim indefinite under 35 U.S.C § 112 can depend on textual support in the body of the claim or in the patent specification. In Luminati Networks, Ltd. v. UAB Tesonet, no. 2:18-cv-299 (E.D. Tex. Aug… Read More

Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for… Read More