IP Blog
35 U.S.C. § 112
PTAB Invalidates Telehealth Patent as Anticipated, Rejects Indefiniteness Challenges, in PG Review
The Patent Trial and Appeal Board recently invalidated a patent related to remote optometry in a Post-Grant Review proceeding. 20_20 Vision Center, LLC v. DigitalOptometrics LLC, PGR2018-00100 (April 15, 2020). The PTAB invalidated the patent as anticipated by an earlier remote-optometry patent, but the challenges for indefiniteness and lack of enablement were rejected. The petition for review by the PTAB...
Claim Term “Important” Leads to Indefiniteness
The Eastern District of Texas recently invalidated several patent claims that the court had found indefinite in a separate claim construction ruling in the case Uniloc 2017 v. Samsung. Interestingly, the court found the claim term “partition of important subject matter” indefinite in some claims and not others, despite stating that the claim term had the same meaning in all...
§ 112 Enablement and Written Description in Post-Grant Review
When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics LLC, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review of U.S. Patent 9,977,039 (“the ‘039 patent”). The PTAB declined institution...
112 and the Zone of Uncertainty
In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C. § 112 for being indefinite and not particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention. The...
Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding
In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for the ‘860 patent was arrived at by the Court after a means-plus-analysis and invocation of 35 U.S.C. § 112, ¶6. Claim 21, the only claim...
The Federal Circuit on Claim Construction and Indefiniteness
In the recent case Intellectual Ventures I LLC v. T-Mobile USA, Inc., the Federal Circuit overturned a district court’s claim construction for reading in a limitation and upheld the district court’s invalidation for indefiniteness for including a subjective term. Claim Construction Intellectual Ventures is a patent assertion entity with an extensive portfolio, from agriculture and construction to nanotechnology and—relevant here—communications....
“Program,” “UI Code,” Not Means-Plus-Function Terms
The Federal Circuit has held that claim terms “program” and “user interface code,” as used in the phrases “program that can operate the movement of the pointer” and “user interface code being configured to detect one or more locations touched by a movement of a user’s finger” are not subject to interpretation as “means-plus-function” limitations. Zeroclick, LLC, v. Apple Inc.,...
Claim Terms “Substantially above” and “Significantly above” found Definite
The Court held, in Arctic Cat Inc., v. Polaris Industries Inc., No. 16-cv-0010 wmw, (MN Dec. 20, 2017), these terms, in the context of the specification and the prosecution history, gave sufficient guidance to a person skilled in the art to understand the contours of the invention, denying Polaris’ motion for summary judgment of invalidity. Plaintiff Arctic Cat. Inc. (Arctic...