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. 20, 2019), the Court issued a claim construction hearing for key terms of U.S. Patent No. 9,241,044. The asserted patents are directed to improved methods of communicating content between multiple devices over the Internet. The relevant claims here are claims 81, 99, and 108 of the ‘044 patent (emphasis added):

Claim 81

A method for fetching over the Internet a first content, identified by a first content identifier, by a first device, identified in the Internet by a first identifier, from a second server identified in the Internet by a third identifier via a second device identified in the Internet by a second identifier, using a first server, the method comprising the steps of:

(a) sending the first identifier to the first server;

(b) sending a first request to the first server;

(c) receiving the second identifier from the first server;

(d) sending a second request to the second device using the second identifier, the second request includes the first content identifier and the third identifier; and

(e) receiving the first content from the second device.

 

Claim 99

…wherein the second device is selected based on past activities.

Claim 108

A method for fetching over the Internet a first content, identified by a first content identifier, by a first device, identified in the Internet by a first identifier, from a second server identified in the Internet by a third identifier via a second device identified in the Internet by a second identifier, using a first server, the method comprising the steps of:

(a) sending the second identifier to the first server;

(b) receiving a second request from the first device, the second request includes the first content identifier and the third identifier;

(c) in response to receiving the second request, sending the first content identifier to the second server using the third identifier;

(d) receiving the first content from the second server; and

(e) in response to receiving the first content, sending the first content to the first device using the first identifier.

For claim 99, Defendant argued that the element “past activities” was indefinite under Nautilus v. Biosig as so broad that the element lacked guidance to the scope of the claim. Defendant argued that a request to a computer to base a decision on “past activities” would be unintelligible without further information about the activities.

The Court disagreed, noting that “breadth is not indefiniteness.” The Court noted that the Specification described certain “past activities,” such as a “timing of [an] event” or even a lack of activity entirely. These examples and distinctions “do[] not give rise to any lack of reasonable certainty,” and the Court construed “past activities” according to its plain and ordinary meaning.

Turning to claim 108, the Court considered whether “a second device” was definite. For claim 81, with an identical preamble, the Court had already held that the recitation of a “second device” was definite.

The Court noted that the “method for fetching…by a first device” described a method performed by the first device. However, while the preamble described a “second device,” no such device could be found in the body of the claim. Unlike claim 81, which recited a similar “second device” in both the preamble and the body, claim 108’s “second device” “fails to find any reasonably clear meaning in the context of the remainder of the claim….” The Court held that the lack of a recited “second device” in the body of the claim rendered claim 108 indefinite.

Lessons for Practice

Courts rely on textual guidance to decide indefiniteness challenges during claim construction. These two constructions above provide two different takes on a common theme: support your claim elements. While “past activities” could be construed broadly, the support in the Specification provided the necessary certainty for its survival during construction. Inserting a claim element in the preamble that is not used or defined in the body of the claim adds uncertainty that Courts may find indefinite.