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 an “innovation-discouraging ‘zone of uncertainty.’” The question in this case was the meaning of the term “spaced relationship” in the recitation in claim 1 of U. S. Patent No. 5,337,753 of “a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other.” The District Court had granted Nautilus’ motion for summary judgment of invalidity under 35 U.S.C. § 112, second paragraph, saying that an appropriate spacing for electrodes could not be determined from the claim. The Federal Circuit reversed, saying that the phrase was not “insolubly ambiguous” because an appropriate spacing of the electrodes — not greater than a width of a user’s hands — could be divined from the intrinsic evidence, i.e., the specification and the file history, including a re-examination proceeding. Balancing the competing concerns of allowing innovation to be protected while not stifling… Read More »Should Nautilius v. Biosign Instruments Change How Patent Applications Are Drafted?
35 U.S.C. § 112
A post to an Internet newsgroup nine months before the priority date of U.S. Patent No. 6,081,835 qualified as a “printed publication” that could be used as invalidating prior art. Suffolk Technologies, LLC v. AOL, Inc., No. 2013-1392 (Fed. Cir. May 27, 2014). This holding was one of the bases on which the Federal Circuit upheld the district court’s grant of summary judgment in the defendant’s favor. Following a claim construction, the district court had held that claims 1, 7, and 9 of the ’835 patent were anticipated by the Usenet post. Suffolk, the patent owner, had further stipulated, prior to bringing this appeal, that claim 6 was anticipated in light of the district court’s claim constructions. The Federal Circuit, in an opinion by Judge Prost, upheld the district court’s claim constructions, and then turned to the question of whether the Usenet post (the “Post”) was a printed publication, and if so, whether the Post was sufficiently reliable to be held to anticipate the ’835 patent claims. Suffolk argued that the Post was not “printed publication” prior art because “the Post’s audience was not those of ordinary skill in the art and locating the Post would be too difficult.” Suffolk’s… Read More »Usenet Post Qualifies as “Printed Publication” Prior Art
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 (IV) alleged that Capital One infringed U.S. Patent No. 7,603,382 (“Advanced internet interface providing user display access of customized webpages”) and U.S. Patent No. 8,083,137 (“Administration of financial accounts”). The court granted Capital One’s motion for summary judgment of invalidity under 35 U.S.C. § 101 with respect to both patents, and added insult to IV’s injury by also holding certain claims of the ‘382 patent invalid for indefiniteness under 35 U.S.C. § 112(b). The asserted claims of the ‘137 patent were directed to “user-selected pre-set limits on spending that are stored in a database that, when reached, communicates a notification to the user via a device.” The ‘382 patent, on the other hand, included system and method claims directed to providing “web site navigation data to the user in accordance with personal preferences provided by the user.” Countering Capital One’s arguments of patent-ineligibility, IV argued… Read More »Financial Business Method Claims Held Not Patent-Eligible (and Invalid for Indefiniteness)
A document can qualify as “prior art” under 35 U.S.C. § 102 even when the document is what one might charitably describe as barely publicly available, and even when the document is incomplete. In re Enhanced Security Research LLC, No. 2013-1114 (Fed. Cir. Jan 13, 2014). In this case, a divided Federal Circuit panel upheld an obviousness determination by the Patent Trial and Appeal Board (PTAB) that the combination of an incomplete product manual and a published academic article rendered a claimed invention obvious in the context of an ex parte re-examination proceeding. The majority, in an opinion authored by Judge Dyk, found that the product manual was sufficient even if incomplete, and qualified as “publicly available” based on a declaration stating that a purchaser of a software product could have requested the manual. Judge O’Malley dissented. The claims of United States Patent No. 6,119,236, as amended during re-examination, were directed to “a computer security device and method for preventing unauthorized individuals from gaining access to a local computer network.” A manual for a software product called NetStalker disclosed all claim elements except “the automatic assignment of different weights to different types of attempted security breaches.” The PTAB and the… Read More »When Is a Document Publicly Available (and Therefore Prior Art)?
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., L.C. v. Overstock.com, Inc., No. 3:12-CV-636-G (N.D. Texas Aug. 30, 2013). The magistrate judge based her recommended holding of invalidity on her finding that the claim confusingly recited two statutory classes of invention, following IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), and In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011). Claim 17 of United States Patent No. 7,525,955 recites: A tangible computer readable medium encoded with computer program for performing contextual searches on an Internet Phone (IP) phone comprising the steps of: receiving a command to perform a contextual search; receiving a search criteria from a user of said IP phone; submitting said search criteria to a server couple to said IP phone; and receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in… Read More »Patent Invalidity for Indefiniteness When a Claim Recites Two Statutory Classes
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 after the application for the patent was filed, the District Court held the relevant claims invalid under 35 U.S.C. § 112. The Federal Circuit affirmed this holding. The claims at issue were directed to improving “seeks” in computer hard drives. A “seek” is the process of locating data on a hard drive. The claims of United states Patent No. 4,916,635 were directed to a method for “generating an input to a system to minimize unwanted dynamics in the system response.” The claims covered both “long seeks,” where data was stored in tracks on the hard drive that were far apart, as well as “short seeks,” where data was stored in tracks that were close together. The application for the ’635 patent was filed in 1988. The District Court invalidated the ’635 patent claims based on an inventor’s testimony “that he was unable to implement the… Read More »Full Scope of Patent Claims Must Be Enabled at the Time of Filing
Claims from four patents were infringed, but invalid as anticipated and obvious, a jury in the Eastern District of Texas found. In an opinion by Chief Judge Rader, the Federal Circuit rejected the patent owner’s challenge to the jury verdict as a matter of law, and also rejected its request for a new trial. Ceats, Inc. v. Continental Airlines, Inc., No. 2012-1614 (Fed. Cir. April 26, 2013). CEATs, Inc. had alleged that various airlines and online reservation companies infringed U.S. Patent Nos. 7,454,361,7,548,866, 7,660,728, and 7,548,869. The patents were directed to “providing information over a network about the availability of seats at an event or on a plane flight, and permitting the user to select or purchase the seats of his choice.” One patent was directed specifically to selecting airline seats. Another recited “information relating to ‘sets of individual seats.’” In contrast, other patents recite information related to a “plurality of available individual seats.” At trial, the defendants focused on Microsoft’s Expedia, which indisputedly was publicly used prior to the priority date of the patents-in-suit. Expedia, as some of us old folks may recall, “was [and is] an online travel reservation system that permitted customers to buy plane tickets and… Read More »Fed. Cir. Affirms Invalidity Findings By E.D. Texas Jury
The Federal Circuit has clarified a patent applicant’s burden to rebut the presumption that a prior art reference is enabling of allegedly anticipated claims. In re Morsa, No. 2012-1609 (Fed. Cir. April 5, 2013). The court therefore vacated and remanded a decision from the Board of Patent Appeals and Interferences, where the Board had affirmed a patent examiner’s rejections under 35 U.S.C. § 102. However, the court did affirm the Board with respect to obviousness rejections, under 35 U.S.C. § 103, of numerous of the applicant’s claims. The rejected claims were generally directed to “receiving a benefit information request from a user, searching a benefit information database for benefits matching the request, and then returning benefit information to the user.” The single piece of prior art cited by the examiner was a 127 word press release that disclosed “a state-of-the art software program designed to help maximize the benefits and services that consumers receive from public and private agencies. It can be configured to evaluate any or all benefits and programs required – Federal, State and/or local.” The examiner alleged that various features of the claims were either explicitly or implicitly disclosed in the press release, or would have been… Read More »Evidence Not Required to Rebut Presumption That Anticipatory Prior Art Is Enabled
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., No. 2012-1020 (Fed. Cir. Feb. 13, 2013). In this case, the Court explained that the claim at issue was indefinite because there is no specific algorithm disclosed in prose, as a mathematical formula, in flow charts, or otherwise. [The patent owner] cites to several places in the specification that it contends describe the software. These citations all explain that the software automatically transmits, but they contain no explanation of how the PGP software performs the transmission function. Further, “having failed to provide any disclosure of the structure for the “transmitting” function, [the patent owner] cannot rely on the knowledge of one skilled in the art to fill in the gaps.” The court also rejected the patent owner’s arguments under O2 Micro International v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008) that the jury was improperly allowed to construe the claims. Further, an… Read More »Federal Circuit Reaffirms Software Means-Plus-Function Requirements
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. C10-1823 JLR (W.D. Wash. Feb. 7, 2013). The court’s opinion will likely get attention from many commentators as an interesting pro-Microsoft development in this long-running and high-profile patent litigation. This post simply summarizes the basis for the court’s indefiniteness holding, which, although not citing the Federal Circuit’s recent Eplus v. Lawson decision, amplifies but does not seem to deviate from that case or earlier precedent. The patents-in-suit, which all rely on a common specification, are United States Patent Nos. 7,310,374, 7,310,375 and 7,310,376. These patents are directed, “at a high-level,” to “systems and methods for encoding and decoding a bitstream (or sequence) of digital video data.” Microsoft brought a summary judgment motion of invalidity directed at certain claims that included recitations of “means for decoding” and “means for using said plurality of decoded smaller portions to construct a decoded picture.” Looking at the first step of means-plus-function claim… Read More »Means-Plus-Function Claims Indefinite Without Supporting Algorithm