Patent Prep and Pros Best Practices

Means-Plus-Function Construction Can Lead to Indefiniteness

In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include a divided platform with wheels on opposite ends. A rider stands on the platform and tilts halves of the platform to control movement of the hoverboard. Most notable of the construed claim terms was “limiting shaft.” Plaintiff and patent owner Unicorn conclusorily asserted that the term should be given its plain and ordinary meaning. Defendant and alleged infringer Golab argued that “limiting shaft” was means a plus-function term and could not be defined. The court started by stating that the term “sounds like a structural element” and was presumed not to be means-plus-function because there was no specific recitation of “means.” However, the court determined that the presumption was rebutted because “limiting shaft” clearly described a function, i.e., limiting relative rotation between two objects connected by the shaft, and further because Unicorn failed to provide evidence that described a structure… Read More »Means-Plus-Function Construction Can Lead to Indefiniteness

When Are Preambles Limiting?

In his recent article Without Preamble, Stanford professor Mark Lemley surveys the morass of law on determining when patent claim preambles are limiting, and he predicts that it will be swept away if the Supreme Court ever faces the issue. Given that possibility, how should practitioners think about drafting preambles when applying for a patent? Much of legal academic literature provides little use for practitioners, instead proposing grand constitutional theories, doing social science on legal institutions, or setting out policy arguments for changing the law. Professor Lemley’s article falls under the more useful category of doctrinal analysis: surveying a field of law and offering some original points that practitioners would do well to think about. The field of law in this article is claim construction when applied to the preamble of the claim. The preamble is the introduction to a patent claim, typically followed by a transition term like “comprising” or “consisting of” and then the body of the claim. The body recites the substantive limitations making up the invention. By default, the preamble is not limiting, meaning that it is given no weight in anticipation, obviousness, or infringement. A prior art reference can anticipate a claim even if what… Read More »When Are Preambles Limiting?

Claim Interpretation and Definiteness of Terms of Degree

In Kitsch LLC v. Deejayzoo, LLC (Case No. LA CV19-02556 JAK (RAOx)) the Central District of California interpreted claims of U.S. Patent No. 10,021,930 that included terms of degree as being sufficiently definite under 35 U.S.C. § 112. The case was initiated by Plaintiff Kitsch, who sought a judgment declaring invalidity of the ‘930 patent. The ‘930 patent is owned by Defendant Deejayzoo and is directed toward an improved shower cap that reduces volume experienced by a user of the cap. Claim 1 of the ‘930 patent recites, in relevant part: 1. A covering apparatus comprising: a unitary material; . . . wherein the unitary material comprises an outer layer and an inner layer; wherein the outer layer comprises a fabric; wherein the outer layer is water repellent; wherein the inner layer is polyurethane[;] . . . and wherein the covering apparatus is a shower cap. During claim construction, Kitsch argued to the Court that claim 1 was indefinite under 35 U.S.C. § 112 and could not be construed because the phrase “water repellent” was relative and failed to provide the necessary definitive metes and bounds. Specifically, Kitsch argued that all fabrics are water repellent to some degree, providing supportive… Read More »Claim Interpretation and Definiteness of Terms of Degree

Claim Interpretation and the Enablement Requirement

Providing a reminder about how to interpret elements of a patent claim when analyzing the claim against prior art during patent prosecution, in Technical Consumer Products, Inc. v. Lighting Science Group Corp. (April 8, 2020), the Federal Circuit vacated a PTAB decision that Appellant Technical Consumer Products’ (“TCP”) failed to show that claims of U.S. Patent No. 8,201,968 were invalid based on anticipation and/or obviousness. The ‘968 patent is owned by Appellee Lighting Science Group Corp. (“LSG”). The ‘968 patent is directed toward an LED assembly this is configured to be retrofitted into an existing light fixture, such as a recessed can lighting fixture. Application of the prior art turned on interpretation of the claim recitation of a “heat sink.” Claim 1 recites: a heat spreader and a heat sink thermally coupled to the heat spreader, the heat sink being substantially ring-shaped and being disposed around and coupled to an outer periphery of the heat spreader; … wherein the heat spreader, the heat sink and the outer optic, in combination, have an overall height H and an overall outside dimension D such that the ratio of H/D is equal to or less than 0.25. Figure 12 from the ‘968 patent… Read More »Claim Interpretation and the Enablement Requirement

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 “partition of important subject matter” indefinite in some claims and not others, despite stating that the claim term had the same meaning in all the claims. Uniloc 2017 is a patent assertion entity that sued several companies for patent infringement in the Eastern District of Texas, in this case electronics- and appliance-maker Samsung. Uniloc’s asserted patent is U.S. Patent No. 7,190,408, related to decoding television signals. The claim term “partition of important subject matter” appears in, among others, claims 1 and 8: 1. A receiver comprising: a decoder for receiving and decoding a signal representing an image and control data wherein the control data defines a vector indicating a location of a partition of important subject matter within said image: the control data further defining the size of said partition showing said important subject matter; and a re-sampling unit for extracting a re-sampled image to be displayed on the screen of a display device from said decoded image by re-sampling said decoded image at… Read More »Claim Term “Important” Leads to Indefiniteness

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. § 112 for being indefinite and not particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention. The indefiniteness determination for the ‘268 patent was arrived at by the Court during a Markman proceeding to interpret certain claim terms. The independent claims of the ‘268 patent each recite an “inner, pliable catheter.” For example, representative claim 1 recites: an inner, pliable catheter slidably disposed in the outer catheter and of greater length than the outer catheter so that a distal end portion of the inner catheter can be extended or retracted from a distal end opening of the outer catheter. During the Markman proceeding the parties disputed the interpretation of the “inner, pliable catheter.” Niazi argued that the phrase should be construed to mean “a catheter that is easily bent, flexible.” Defendants Boston Scientific and St. Jude argued that the phrase was indefinite. Niazi relied on McCreary v. United States, 35 Fed. Cl. 533, 556-57 (1996) to support… Read More »112 and the Zone of Uncertainty

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 the ‘860 patent was arrived at by the Court after a means-plus-analysis and invocation of 35 U.S.C. § 112, ¶6. Claim 21, the only claim at issue, recites: 21. A computer product comprising a memory, a CPU, a communications console and a non-transitory computer usable medium, the computer usable medium having an operating system stored therein, the computer product further comprising a customization module, the computer product authorizing access to digital content, wherein the digital content is at least one of an application, a video, or a video game, wherein the digital content is at least one of encrypted or not encrypted, the computer product configured to perform the steps of: receiving a digital content access request from the communications console, the access request being a read or write request of metadata of the digital content, the metadata of the digital content being one or more of a database or storage in connection to the computer product, the request comprising a verification token corresponding to… Read More »Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

Markman Ruling Finds Preamble Limiting, Claim Term Indefinite

The Southern District of Texas issued an interesting Markman ruling in ConocoPhillips v. In-Depth Geophysical. While the court construed most of the claim terms in ConocoPhillips’s favor, In-Depth managed to secure rulings that the preamble of a claim was limiting and that a claim term was indefinite. This conflict began with ConocoPhillips suing In-Depth Geophysical over four patents: U.S. Patent Nos. 8,897,094; 9,632,193; 9,823,372; and 9,846,248. ConocoPhillips, which you’ve likely heard of, is a large multinational oil and gas company. In-Depth Geophysical, which you’re less likely to have heard of, is a consulting company focusing on, in its words, the “toughest subsurface challenges.” The patents all relate to seismic imaging, sending sound waves into the ground and mapping rock formations based on the returning sound waves. In the first ruling of note, the court determined whether the preamble to this claim is limiting, in other words, whether the accused product must perform the preamble to infringe: A computer-implemented method for determining optimal sampling grid during seismic data reconstruction, the method comprising: a) constructing an optimization model, via a computing processor, given by minu‖Su‖1t. ‖Ru–b‖2≤σ wherein S is a discrete transform matrix, b is seismic data on an observed grid, u… Read More »Markman Ruling Finds Preamble Limiting, Claim Term Indefinite

Using Claim Construction to Import Limitations

In Continental Circuits LLC v. Intel Corp. No. 2018-1076 (Fed. Cir. Feb. 8, 2019) the Federal Circuit determined the district court erred in its claim construction and explained the high bar that must be met to import limitations from a patent specification to the claims. Plaintiff Continental Circuits, LLC, (Continental) sued Defendants Intel Corp. et. al., (Intel) for infringement of U.S. Patent Nos. 7,501,582 (“the ’582 patent”); 8,278,560 (“the ’560 patent”); 8,581,105 (“the ’105 patent”); and 9,374,912 (“the ’912 patent”)(collectively “the patents”). The patents are direct toward a “multilayer electrical device . . . having a tooth structure” and methods for making such device. The patents are continuations of each other and share a substantially common specification. The patents’ specifications describe that the best method for producing the claimed teeth is to perform a double desmear etching process. The specifications specifically point out that the double desmear process differentiates the patents from a single desmear process used in the prior art. During prosecution of the ‘560 patent, the claims were subject to a rejection for indefiniteness and written description under 35 U.S.C. section 112. In response, Continental submitted an expert declaration explaining that the “etching” process disclosed in the specification… Read More »Using Claim Construction to Import Limitations

Patent Drafting Tip: Take Care with Open-Ended Descriptions

Be careful with the conventional wisdom that tells a patent drafter to use permissive, open-ended language when describing features of an invention.  Like me, you may have been taught to avoid “patent obscenities” like “invention,” “objects,” etc., and to use permissive helping verbs wherever possible, i.e., “the widget [could, might, can, may, etc.] be blue,” rather than “the widget is blue.”  Be careful: the conventional advice is good advice most of the time – but not, I believe, all of the time. Consider this patent drafting guideline: A patent specification should use verbs of possibility by default. However, in describing various embodiments, use limiting verbs for features that are necessarily present in every embodiment. This is guidance for lawyers, so of course it comes with many caveats. Often there is a gray area encompassing the line between features that do and do not truly limit the invention.  Thus, as the rule suggests, err on the side of open-ended language. But be mindful of instances where permissive language can hurt, and will not help. First, a reminder why the selection of an open-ended versus a limiting verb matters. It’s pretty simple. Open-ended or permissive verbs provide support for claim language without,… Read More »Patent Drafting Tip: Take Care with Open-Ended Descriptions