Patent Standards

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

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

§ 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 LLC, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review of U.S. Patent 9,977,039 (“the ‘039 patent”). The PTAB declined institution because if found that Instrumentation Laboratory Co. (“Petitioner”) didn’t meet its burden of proof to support the challenges under 35 U.S.C. § 112 it was alleging against the ‘039 patent. Hemosonics LLC (“Patent Owner”) is the owner of the ‘039 patent, which is directed toward devices, systems and methods for evaluating hemostasis of blood. The invention uses test chambers for holding blood, and “transducers associated with each of the plurality of test chambers in the interrogation of the test sample.” ‘039 Patent, claim 1 (identified as representative by the PTAB). The ‘039 patent issued from a continuation application filed on July 7th, 2017.  The ‘039 patent is a continuation of a series of a US patent application and prior US provisional application having priority dates of Feb. 15, 2012 and Feb. 15, 2011, respectively (“priority applications”). Remember, post-grant review is… Read More »§ 112 Enablement and Written Description in Post-Grant Review

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

Finding of Improved Computer Functionally Supports Patent-Eligibility

In IDB Ventures, LLC v. Charlotte Russe Holdings, Inc. (2:17-CV-660-WCB-RSP), the Eastern District of Texas highlighted the effectiveness of showing that a patent claim is directed to a specific improvement to computer functionally for overcoming a challenge based on 35 U.S.C. § 101. Plaintiff IDB Ventures, LLC, (IDB) sued Defendant Charlotte Russe Holdings, INC., (Charlotte Russe) for infringement of U.S. Patent No. 6,216,139 (the ‘139 patent) entitled “Integrated Dialog Box for Rapidly Altering Presentation of Parametric Text Data Objects on a Computer Display.” Claim 1 of the ‘139 patent recites: 1. A method for using a computer system to sort and display text data objects, comprising the steps of: a. imaging, on a display device controlled by the computer system, a query dialog box, where in the query dialog box displays each of a plurality of parameters associated with each of the text data objects, forms a plurality of spaces for listing values associated with each displayed parameter, and further forms a space for selecting a sort order; b. designating, for each displayed parameter, a parameter value; c. constructing a sort order from the displayed parameters in the space for selecting a sort order; d. selecting, using the computer system, text data… Read More »Finding of Improved Computer Functionally Supports Patent-Eligibility

Motivation to Combine References Need Not be Explicit

How much motivation do you need to combine references to make something obvious? According to the Federal Circuit, enough to reasonably discern a proper path to combine the references. In Cablz, Inc. v. Chums, Inc., No. 2016-1823 (Fed. Cir. Sep. 12, 2017)(nonprecedential), the Federal Circuit Court of Appeals affirmed an obviousness rejection from the Patent Trial and Appeal Board of claims of U.S. 8,366,268. The ‘268 patent is directed to a resilient cable for eyeglasses that suspends off a user’s neck while retaining eyeglasses around the user’s neck. The ‘268 patent allegedly solves the problem of eyeglass retainers that rest on users’ necks, and thus can get entangled with clothing or covered in sweat or suntan lotion. The PTAB rejected the claims of the ‘268 patent based on a news article (Monroe) about an Oregon fisherman who connected his eyeglasses temples with 300-lb monofilament fishing line bent so that the line “never hangs up and never drapes around [the fisherman’s] neck.” The PTAB combined Monroe with US Patent No. 6,941,619 to Mackey, which disclosed temple retainers that could be moved along the eyeglasses temples. The PTAB concluded that the references taught “temple retainers connected by a resilient cable.” Cablz, the… Read More »Motivation to Combine References Need Not be Explicit

When Are Patent Claims Standard-Essential?

The question of whether claims from 23 different patents were “essential” to the IEEE 802.11 standard (popularly known as Wi-Fi) was presented to the court in In re Innovatio Ip Ventures, MDL Docket No. 2303, Case No. 11 C 9308 (N.D. Ill. July 26, 2013). In evaluating these claims, the court addressed a number of different issues related to determining when patent claims are standard-essential. Background The court had conducted a bench trial, to which the parties stipulated, concerning what patent claims were standard-essential. This proceeding came when, “[f]ollowing discovery, but before claim construction, the parties and the court agreed that the best course toward resolving the parties’ dispute would be to pause and evaluate the potential damages available to Innovatio if the Defendants are found to infringe Innovatio’s patents.” Innovatio, the Plaintiff, had acquired the patents from parties who had agreed to provide reasonable and non-discriminatory (RAND) license terms for patents essential to the 802.11 standard. Accordingly, the Plaintiff’s possible damages turned on whether it was obligated to offer the Defendants RAND license terms as required by the IEEE bylaws. The parties agreed that the current version of the IEEE bylaws would apply, even though past versions were in… Read More »When Are Patent Claims Standard-Essential?

Breach of Duty to Offer RAND Licensing Terms?

A lawsuit brought against a patent owner based on an alleged failure to offer a patent license on reasonable and nondiscriminatory (RAND) terms has largely survived the patent owner’s motion to dismiss.  Realtek Semiconductor Corp. v. LSI Corp., No. C-12-03451 RMW (N.D. Cal. Oct. 10, 2012). The defendants, who contended that the patents at issue were essential for practicing the IEEE 802.11 “Wi-Fi” wireless networking standard, had instituted an International Trade Commission proceeding against the plaintiff, Realtek.  Before the 802.11 standard was released, the patent owner had submitted to the IEEE “Letters of Assurance” that it would grant RAND licenses.  However, the defendants had offered to license their patents to Realtek, allegedly in exchange for a royalty that would have exceeded the selling price of Realtek’s products.  Realtek also alleged that the defendants breached their RAND obligations by licensing their patents to other parties for royalties that did not exceed the selling prices of those parties’ products. Realtek had stated a cause of action for breach of contract, asserting that the defendants’ initial license offer had to be on reasonable and nondiscriminatory terms, a theory rejected by the court in Microsoft v. Motorola, No. C10-1823JLR (W.D. Wash. Feb. 27, 2012).  Nonetheless, the… Read More »Breach of Duty to Offer RAND Licensing Terms?

Must an Offer to License Be Reasonable and Non-Discriminatory?

What does a patent owner have to do to meet a requirement of a standards setting organization (SSO) that license terms be reasonable and non-discriminatory (RAND)?  Does the patent owner simply need to be willing to license on RAND terms, or does the patent owner have to include RAND terms in its initial offer?  In the continuing patent battle between Microsoft and Motorola, the court recently held that this question must be answered according to principles of contract interpretation applied to the governing SSO policies.  Because the parties failed to brief the law of contract interpretation, the court denied parts of Microsoft’s summary judgment motion seeking findings that (1) Motorola was obligated to offer RAND terms to SSOs’ third party beneficiaries, and (2) Motorola’s offer to Microsoft to license standards-essential patents violated Motorola’s RAND obligations.  Microsoft v. Motorola, No. C10-1823JLR (W.D. Wash. Feb. 27, 2012). Courts, litigants, and commentators (see this recent post on the PatentlyO blog, for example) have for some time pondered the question of what it means for patent license terms to be RAND (or, sometimes, fair, reasonable and non-discriminatory).  This opinion is interesting not because it moves the patent world any closer to understanding what RAND means… Read More »Must an Offer to License Be Reasonable and Non-Discriminatory?