Posts Tagged: "indefiniteness"

Court Reverses Indefiniteness Under Nautilus; Design Patents for Surgical Shears are Valid

Ethicon sued Covidien in the Ohio district court for infringement of utility and design patents directed to ultrasonic surgical shear devices. The court granted Covidien’s motions for summary judgment, concluding that one patent was invalid as indefinite, that another patent was not infringed by Covidien’s products, and that several design patents were invalid as functional and were not infringed. Ethicon appealed the judgment to the Federal Circuit. The Federal Circuit reversed on indefiniteness, reversed the district court’s determination that Ethicon’s design patents were invalid as primarily functional, and vacated the summary judgment of non-infringement for a surgical shears patent.

A Software Patent History: The Algorithm Cases

These cases are very important though because they give us the best glimpse yet into understanding the disclosure requirements for software patents that utilize means-plus-function claim language. Understanding this particular aspect of patent drafting may be crucial moving forward given that some believe that means-plus-function claiming may be one way to get at least some patent claim coverage in the wake of Alice. Therefore, given that the extraordinarily strict disclosure requirements mandated by employing means-plus-function claiming, this technique may well be the future for software patents. Certainly adhering to the extreme disclosure requirements in the Algorithm cases will be a best practice moving forward even if you do not employ means-plus-function claiming, and it will likely remain a best practice until some statutory or common law relief from Alice is achieved.

The Disclosure Revolution – A Report from the Front, 2014

The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms… Overall, 2014 will likely be remembered primarily for Alice and its eventual progeny. In addition to its impact on the law per se, the economic effects may prove enormous. An entire segment of the patent community stands vulnerable to a slowdown, or shutdown, of patenting activity in the business methods and software fields. Other areas, including definiteness, will feel the effects of 2014, but in a far more incremental fashion.

SCOTUS Overrules “Insolubly Ambigous” Indefiniteness Standard

The district court determined that the term was indefinite, the Federal Circuit reversed. According to the Federal Circuit, a claim is indefinite “only when it is not amenable to construction or insolubly ambiguous.” Under that standard, the majority determined, the ’753 patent survived and was not indefinite. The Supreme Court characterized this test as the Federal Circuit tolerating “some ambiguous claims but not others.”

Federal Circuit Puzzles Over Claim Construction Deference

The en banc Federal Circuit on September 13, 2013, heard oral argument on whether to overrule its en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), and hold that claim construction can involve issues of fact reviewable for clear error, and that it is not entirely an issue of law subject only to de novo review. On appeal is the district court decision that a person of ordinary skill in the art would understand the claim term “voltage source means” to correspond to a rectifier or other voltage supply device. It thus rejected ULT’s argument that the term invokes Section 112 ¶6 and that the claim is invalid for indefiniteness for lack of specific structure in the specification. A Federal Circuit panel reversed in a nonprecedential decision, concluding from a de novo review that “voltage source means” does invoke Section 112 ¶6 and that the claim is invalid for indefiniteness. That panel decision was vacated when the appellate court decided to consider the claim construction issue en banc.

A Primer on Indefiniteness and Means-Plus-Function

The basic law relative to § 112, ¶6 explains that a decision on whether a claim is indefinite under § 112, ¶ 6 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Traditionally, claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art. The question with means-plus-function claiming, however, is whether evidence from that mythical individual skilled in the art is even admissible. No structure in the specification means the person of skill in the art cannot save the disclosure by understanding. Thus, means-plus-function claims are largely valid at the mercy of a federal judge who in all certainty is not one of skill in the art and who likely has an aversion to such claiming techniques because they prefer dealing with tangible structure.

Federal Circuit on Software Patents: Show Me the Algorithms

Earlier today the United States Court of Appeals for the Federal Circuit issued a decision in Noah Systems, Inc. v. Intuit, Inc. According to the Federal Circuit the specification of the ’435 patent must contain an algorithm that performs the function associated with the “access means” limitation, otherwise the limitation is indefinite and the claim invalid. Ultimately, the Federal Circuit would determine that the algorithm disclosed was incomplete. This lead the Court to explain that when the specification discloses an algorithm that only accomplishes one of multiple identifiable functions performed by a means-plus-function limitation, the specification is treated as if it disclosed no algorithm. An incomplete algorithm means no algorithm as all, which means that what one of ordinary skill in the art would understand from the disclosure is no longer relevant. This is where I would depart from the Federal Circuit and think that the law as it relates to means-plus-function claiming of computer software is all wrong. Means-plus-function claims has always been about what someone of ordinary skill in the art would appreciate (see, for example, USPTO 112 guidelines, 76 Fed. Reg. 7162 (9 February, 2011) so why is that not the case with respect to computer software?

CAFC Kills Means-Plus-Function in Software Patent

All of this might be confusing to a Judge who is unfamiliar with computers, but that is not the test, is it? The question is supposed to be whether it would be confusing to a person of relevant skill in the relevant technology area. Indeed, disclosure sufficient for means-plus-function claiming may be implicit or inherent in the specification if it would have been clear to those skilled in the art what corresponds to the means-plus-function claim limitation. See MPEP 2181 and Atmel Corp. v. Information Storage Devices, Inc. (Fed. Cir. 1999). Indeed, the Federal Circuit in Atmel concluded that the title of the article incorporated by reference in the specification may, by itself, be sufficient to indicate to one skilled in the art the precise structure of the means for performing the recited function. So the focus is supposed to be on one of skill in the art even when interpreting whether the specification provides adequate support for means-plus-function claiming. Nowhere in the majority opinion is it stated that a person of skill in the art would not have known and would have found the claim vague or ambiguous.

Ordinary Plain Meaning: Defining Terms in a Patent Application

The question of whether a term is defined adequately is really a legal question, so the views and opinions of those who are not well versed in the law are hardly probative. Inventors invent and patent attorneys describe those inventions to satisfy the legal requirements. If inventors could describe their inventions to meet the legal requirements they wouldn’t need patent attorneys, but we all know that inventors who represent themselves make numerous errors and always obtain far more narrow protection than they would have been entitled to receive. They just don’t understand the law well enough and are not qualified to offer opinions on matters of law.

U.S. Patent Office Issues Supplementary 112 Guidelines

Of course, it will be most useful for patent examiners to review and truly internalize the guidelines, but there is some excellent language here that is quite practitioner and applicant friendly. There is explanation of situations where a rejection should be given, but more importantly from a practitioner standpoint will be those examples and illustrations of when a rejection is not appropriate. The discussions of what an appropriate Office Action should include will no doubt be particularly useful as well as practitioners try and hold examiners feet to the fire to provide the type of information required in order to truly appreciate any problems identified by the examiner and how to appropriately respond. Indeed, it is my guess that patent practitioners will be yelling “AMEN” from the top of their lungs as they read various portions of the Guidelines.