The Software IP Report
When Is a (Software) Patent Claim Indefinite?
By Mike McCandlish
Categories: 35 U.S.C. § 112, Software Patents, The Software IP Report
Patent drafters received a reminder to include terms in the specification as they will appear in the claims, and to make sure claim terms are adequately defined and understood, in Dunnhumby USA, LLC v. Emnos USA Corp., No. 13-CV-0399 (N.D.Ill. Jan. 26 and Feb. 4, 2015). Considering possible indefiniteness of five elements of a disputed claim of U.S. Patent No. 7,421, 422, the court found one element was indeed indefinite – and this finding, of course, was enough to invalidate the patent claim.
Defendant Emnos asserted the ’422 patent, entitled “System and Method for Data Capture and Report,” against plaintiff Dunnhumby in a counterclaim. The ’422 patent describes a method for executing a database query such that the results of the query may be delivered to a separate query database. The query database may be used, for example, to statistically analyze the queries conducted on the database. The patent application was initially filed on September 2, 2002. Following an extensive prosecution including two Requests for Continued Examination, the Patent issued on September 8, 2008.
After a Markman claim construction hearing, the court considered, in addition to claim constructions of patents asserted by both parties, indefiniteness arguments presented by Dunnhumby with regard to the ’442 Patent.
The court began with the statutory requirement that a patent specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112-2 (2006 ed.). Citing the recent decision in Nautilus, Inc. v. Biosig Instr., Inc., 134 S. Ct. 2120, 2124, 189 L.Ed.2d 37 (2014), the court explained that a patent claim is invalid for indefiniteness if its language, when read in light of the prosecution history “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Further, as the Nautilus court reinforced, the party alleging indefiniteness under Section 112 must prove by clear and convincing evidence that the challenged claims of the patent are indefinite.
With respect to four of the five claim terms that Dunnhumby alleged were indefinite, the court found that Dunnhumby had failed to meet its burden of proof. However, the court held the claim term “Selection of a Query Type” to be indefinite.
The court first considered the intrinsic evidence concerning this claim term. The claims of the ‘442 Patent recite “query type” twice: first in the phrase “selection of a query type,” and second in the phrase “creating a Structured Query Language (SQL) statement based on said query field, said query criteria, and said query type”. The specification did not use the precise term “query type” but did refer to “the type of query”. Unfortunately for the patent owner, the specification did not address what properties of the query are contemplated by this expression.
The court further considered uses of the term “type” in the specification. The term “type” appears multiple times in the specification in phrases such as “types of data”, “type of format”, and certain types of information”, etc. However, the court concluded that these references to “type” do not provide specific guidance for interpreting “query type.”
Receiving insufficient guidance from the intrinsic evidence, the court considered extrinsic evidence. The ‘442 patent takes priority from Provisional Application 60/393,207 (the ‘207 Patent). The ‘207 Patent has a specific definition for “query type” stating “Query type is the functional type of the query (Basic, Advanced, Programmer, etc.).” Expert testimony was also considered. Emnos’ expert suggested that the plain and ordinary meaning for “type” is a category of information having common characteristics. Dunnhumby’s expert, on the other hand, took the position that “query type” has no plain and ordinary meaning. Query type might refer to “the type of business analysis the user wishes to perform (sales analysis, account information, etc.). It might also refer to the skill level of the user (beginner, advanced, etc.). Dictionary definitions also support multiple interpretations of “type.”
Based on the lack of guidance in the intrinsic evidence as well as the extrinsic evidence, the court concluded that the term “selection of a query type” was indefinite. The person of ordinary skill is not given any parameters for reasonable certainty as to what “query type” refers in the claim language.
For patent practitioners, the clear takeaway is that claim terms should generally (1) to appear in the specification and (2) be defined. As a fallback, if a patent specification does not include an exact claim term that is added during prosecution, consider amending the specification to include the term (assuming this can be done without adding new matter).