IP Blog
35 U.S.C. § 112
Federal Circuit Holds Patent Claims to Software Functionality Indefinite: Rain Computing, Inc. v . Samsung Electronics Co., LTD
The Federal Circuit affirmed the invalidity based on indefiniteness under 35 USC § 112(b) of patent claims “directed to delivering software application packages to a client terminal in a network based on user demands.” Rain Computing, Inc. v . Samsung Electronics Co., LTD, 2020-1646, 2020-1656 (Fed. Cir. March 2, 2021) (precedential, opinion by Judge Moore, joined by Judges Lourie and...
Conflicting Interpretations Invalidate Patent for Indefiniteness: Infinity Computer Prods., Inc. v. Oki Data Americas, Inc.
What is a computer, when recited in a patent claim? The Federal Circuit recently discussed whether a recitation of a “computer” in a claim was indefinite under 35 U.S.C. § 112 in light of conflicting interpretations by the patentee. Infinity Computer Prods., Inc. v. Oki Data Americas, Inc. 2020-1189 (Fed. Cir. Feb. 10, 2021). Plaintiff Infinity asserted several patents against...
How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn
A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means. SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury...
Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)
The Federal Circuit has modified a panel decision and denied a rehearing en banc in a closely watched § 101 case, American Axle & Manufacturing v. Neapco Holdings. The original decision had found all the claims, which were directed to a method of manufacturing driveline propeller shafts, ineligible subject matter (previously covered in this post). The new panel decision maintained...
District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime
Indefiniteness was decided in a claim construction order from the Northern District of California in VTT Technical Research Centre of Finland v. SiTime. The court corrected a claim by inserting a missing element, but also invalidated all the claims for indefiniteness because the means-plus-function element “drive or sense means” lacked sufficient structure. VTT thus won a battle but lost the...
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...
Use of Passive Voice Insufficient to Connote Structure in MPF Analysis
The District Court for the Northern District of California recently issued a claim construction order in Zoho Corporation v. Sentius International, LLC, finding that the claim limitation “means for compiling the source material image from at least the plurality of discrete pieces” was indefinite. The present action arose from a declaratory judgement action brought about by Zoho alleging that it...
Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco
In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the...
Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite
The Eastern District of Texas held that the only asserted claim of U.S. Patent No. 6,452,515 was indefinite because “the term ‘[means] for encoding these labels in a random order’” (alterations in original) invokes 35 USC § 112 ¶ 6, and “the specification of the ‘515 Patent does not disclose an algorithm for performing the encoding function required by this...
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...