Posts Tagged: "indefiniteness"

CAFC Judges Split on Indefiniteness Analysis for Identity Theft Patent

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).

Split CAFC Partially Reopens Door for Valve in Attempt to Overturn $4 Million Patent Infringement Ruling

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.

CAFC Vacates Section 112 Indefiniteness Ruling, Sending St. Jude Medical Back to Court

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.

CAFC Says Dyfan Claim Limitations are Not Invalid Due to Means-Plus-Function Format

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.

CAFC Rules District Court Erred on Legal Standard for Claim Indefiniteness

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.