The Software IP Report

§ 112 Indefiniteness for Mixing Claims to Apparatus and Method

By Charles Bieneman

Categories: 35 U.S.C. § 112, Software Patents, The Software IP Report

Claims in a patent directed to medical diagnostics were indefinite under 35 U.S.C. §112(b) and Nautilus, Inc. v. Biosign Instruments, Inc. (S. Ct. 2014), said a court in granting summary judgment of invalidity. Lecat’s Ventriloscope v. MT Tool and Manufacturing, No. 1-16-cv-05298 (N.D. Ill. Nov. 20, 2018).

Claim 1 of U.S. Patent No. 7,645,141 seems to recite an apparatus, but note the emphasized language:

1. An arrangement for auscultation training, comprising:

a signal generator capable of generating an audio signal representing at least one sound, the signal generator being controlled by a human operator, wherein the human operator plays one or more appropriate audio files according to a user’s placement of a stethoscope headpiece on a patient;

a transmitter associated with the device for transmitting an audio signal corresponding to the at least one sound;

an auscultation device, comprising a stethoscope, remote from the transmitter, the auscultation device comprising:

a receiver adapted to receive the audio signal from the transmitter; and

a speaker adapted to audibly communicate the audio signal received by the receiver to the user.

The court agreed with the defendant that claim 1 and its dependent claims “fell squarely” within a line of cases including IPXL Holdings, LLC v. Amazon. com, Inc., 430 F. 3d 1377 (Fed. Cir. 2005); H-W Tech., L.C. v., Inc., 758 F.3d 1329 (Fed. Cir. 2014). QuotingIPXL,the court found that, here, the clause reciting “wherein the human operator plays” rendered the claim

genuinely “unclear whether infringement . . . occurs when one creates a system that allows” the human operator to play audio files according to the placement of a stethoscope headpiece on a patient, “or whether infringement occurs when the [human operator] actually uses” the claimed system to do so.

The claim language could not be saved by interpreting it as functional explanation or statement of capability because “[t]he wherein clause . . . does not simply explain what the claimed ‘arrangement’ allows or should allow the human operator to do; it expressly requires the human operator to take action.”

Lessons for Practice

To state the obvious, when drafting patent claims, pay attention to mixing in method steps with system elements, and vice versa!