Posts Tagged: "indefiniteness"

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held that certain claims of a patent for a system to protect against identity theft and fraud were invalid for indefiniteness. Judge Schall dissented-in-part, explaining that he would not have found the claims indefinite based on the intrinsic evidence. U.S. Patent No. 9,361,658 is owned by Mantissa Corporation and is titled “System and Method for Enhanced Protection and Control Over the Use of Identity.” Mantissa sued First Financial Corporation and First Financial Bank, N.A. in the U.S. District Court for the Northern District of Illinois, alleging infringement of certain claims. The parties mainly disputed two terms during claim construction: (1) “transaction partner” and (2) “OFF.” The district court relied on First Financial’s expert testimony to conclude that “transaction partner” was indefinite, after finding that the expert used was a person of ordinary skill in the art (POSA).

Yesterday, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed in part a district court ruling that found video game company Valve willfully infringed Ironburg’s U.S. Patent No. 8,641,525. However, the CAFC judges ruled that the district court erred when it estopped Valve from raising several grounds that were not the subject of its partially-instituted inter partes review (IPR) petition against Ironburg. Judge Clevenger dissented. A jury levied Valve with $4 million in damages, a sum that Ironburg argued should be enhanced. The district court did not grant enhanced damages, found that the two challenged claim terms were not indefinite, said the claims were willfully infringed, held that Valve was estopped from litigating the prior art grounds on which IPR was requested but not instituted, and also held that Valve was estopped from litigating later-discovered invalidity grounds. The CAFC affirmed all but the latter holding, explaining that the later-discovered prior art that was not part of the IPR petition must be held to a “skilled searcher” standard that it is the burden of the patent holder to prove is subject to IPR estoppel.

On April 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. in which the court affirmed most of a ruling from the District of Minnesota, including sanctions against Niazi for improper use of expert testimony, as well as a finding of no induced infringement by St. Jude on one of Niazi’s asserted patent claims. However, the Federal Circuit’s decision reversed the Minnesota district court’s ruling invalidating most patent claims asserted by Niazi for indefiniteness under Section 112. The CAFC found that Niazi’s asserted claims were not invalid simply for including descriptive words or terms of degree, as long as the intrinsic record and extrinsic evidence enable a skilled artisan to identify the boundaries of a claim’s scope.

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded a decision by the U.S. District Court for the Western District of Texas that Dyfan, LLC’s claims were invalid as indefinite. The CAFC concluded that the disputed claim limitations were not drafted in means-plus-function format, and therefore 35 U.S.C. § 112 ¶ 6 did not apply. Patent owner Dyfan sued Target Corp. for infringement of various claims of U.S. Patent Nos. 9,973,899 and 10,194,292. Following a claim construction hearing, the district court found that the disputed (1) “code”/“application” limitations and (2) “system” limitations of the patents-in-suit were invalid as indefinite. Specifically, the district court found that: (1) these claim limitations of the patents-in-suit are in means-plus-function format under Section 112 ¶ 6 and (2) the specification does not disclose sufficient structure corresponding to the recited functions. Dyfan subsequently appealed.

On January 27, the United States Court of Appeals for the Federal Circuit (CAFC) reversed the decision of the United States District Court for the Northern District of California to invalidate claims in two related patents, holding that the district court used the incorrect legal standard for indefiniteness. Nature Simulation Systems, Inc. (NSS) is the owner of United States Patents No. 10,120,961 (the ‘961 patent) and No. 10,109,105 (the ‘105 patent). Both patents relate to computer-implemented methods for building three-dimensional objects employing a computation method called “Boolean operation.” NSS brought an infringement action against Autodesk, Inc. in district court alleging infringement of claims 1 and 8 of the ‘961 patent and claim 1 of the ‘105 patent.

According to Judge Taranto, when the issue of indefiniteness of claims is raised in an IPR the challenge is not merely a contest between the petitioner and the patent owner, but rather protects the interests of the judicial system, the agency, and the public. Therefore, the Board should have conducted a prior-art analysis without any consideration of or deference to the stipulation of the parties, and entry of a final written decision on the merits absent such an independent consideration was inappropriate. The Board should have determined if there is indefiniteness and if “such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits, then the Board should conclude that it is impossible to reach a decision on the merits of the challenge and so state in its decision.”

How much detail is needed in a patent application for a software-based invention? Software patents present some unique challenges that many other kinds of patent applications do not need to contend with, one of them being the level of disclosure and care in drafting needed to avoid indefiniteness issues. While source code is not required in most cases, a growing body of case law indicates that insufficient detail about the algorithms underpinning the invention could render the patent claims indefinite, meaning that the scope of the claimed invention is too ambiguous. If the patent examiner deems the disclosure to be inadequate during examination, indefiniteness could prevent a patent from issuing. In the case of an already-issued patent, indefiniteness could render the claims unenforceable.

On February 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s conclusion of invalidity under Section 112 and/or non-infringement in Synchronoss v. Dropbox. Synchronoss had appealed the district court’s decision that the asserted claims, which were “drawn to technology for synchronizing data across multiple devices” are either invalid under 35 U.S.C. Section 112 for indefiniteness, or not infringed.” Meanwhile, Dropbox cross-appealed, arguing that the claims are patent ineligible subject matter under Section 101. The patents at issue are U.S. Patent Nos. 6,671,757; 6,757,696; and 7,587,446.

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential opinion affirming a Delaware district court finding that Infinity Computer Products, Inc.’s patent claims relating to using a fax machine as a printer or scanner for a personal computer were invalid for indefiniteness. Infinity Computer Products, Inc. v. Oki Data Americas, Inc. (Feb. 10, 2020). Chief Judge Prost authored the opinion. The patents at issue were U.S. Patent Nos. 6,894,811; 7,489,423; 8,040,574; and 8,294,915, which share a specification. The term at issue was “passive link,” which refers to the link between the fax machine and the computer.

Last week, the United States Patent and Trademark Office (USPTO) issued binding indefiniteness guidance in a memorandum from Director Andrei Iancu that addresses confusion about which indefiniteness standard applies in post-grant proceedings: the standard set forth in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) or in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). Specifically, the memorandum confirms that the standard in Nautilus is the correct approach for analyzing indefiniteness in America Invents Act (AIA) post-grant proceedings.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied HZNP Medicines LLC’s (Horizon’s) request for rehearing in HZNP Medicines LLC v. Actavis Laboratories UT, Inc., with Judges Newman, O’Malley, Stoll and Lourie dissenting. Judge Lourie, writing for the dissent, said that the Court “has erroneously misconstrued the ‘consisting essentially of’ language in evaluating the definiteness requirement of 35 U.S.C. § 112” and that rehearing en banc should have been granted. In October, the CAFC affirmed the U.S. District Court for the District of New Jersey’s findings of invalidity and noninfringement of certain claims of some of the asserted Horizon patents, as well as the district court’s finding of nonobviousness of one claim of another Horizon patent. Judge Newman dissented in that decision, saying that “The majority’s new ruling sows conflict and confusion” and that it could “cast countless patents into uncertainty.”

On October 9, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision in HZNP Medicines LLC v. Actavis Laboratories UT, Inc. affirming the U.S. District Court for the District of New Jersey’s findings of invalidity and noninfringement of certain claims of some of the asserted HZNP (Horizon) patents, as well as the district court’s finding of nonobviousness of one claim of another Horizon patent. The finding of nonobviousness means that Actavis, owned by generic drug maker Teva Pharmaceuticals, is enjoined from engaging in the commercial use, offer for sale, or sale of its product covered in its Abbreviated New Drug Application (ANDA) until the expiration of U.S. Patent No. 9,066,913 (the ‘913 patent) in 2027.

A jury in the United Stated Federal District Court for the District of Delaware recently delivered a verdict awarding nearly $24 million dollars in reasonable royalty damages to plaintiffs Bio-Rad Laboratories and the University of Chicago. Along with finding that defendant 10x Genomics had infringed upon patents covering genetic analysis technologies, the jury also found that 10x Genomics’ infringement was willful and found it “highly unprobable” (i.e., the words of the jury verdict form) that the asserted patent claims were valid.

“While the jury’s $130 million verdict is significant and may sound large in the abstract, it may not be enough without enhancement to deter infringing conduct given the context of this case,” Judge Olguin wrote. Evidence presented at trial shows that the infringing products sold by Cochlear generated $1.8 billion in revenues. Cochlear had publicly stated in a 2016 annual report that the jury’s verdict won’t disrupt Cochlear’s business or U.S. customers.