In a recent decision, the Federal Circuit affirmed a district court's finding of indefiniteness but reversed the district court's holding of anticipation of other claims.  The district court held the means-plus-function limitations did not have corresponding structure disclosed in the specification, rendering them indefinite, and that the combination of two examples in a prior art publication anticipated the remaining asserted claims.

The Federal Circuit agreed the means-plus-function limitations were indefinite.  The limitations were computer-implemented, which means to be definite, the specification must disclose "more than simply a general purpose computer or microprocessor," but instead must disclose "the special purpose computer programmed to perform the disclosed algorithm."  There was no such disclosure here, so the Federal Circuit held the claims were correctly held indefinite.

Regarding anticipation, however, the court reaffirmed its previous cases holding in order to anticipate, it is not enough for all elements of the claim to be disclosed in a single reference.  All the elements must also be disclosed as arranged in the claim.  Here, the claim elements were spread across two different examples given in the allegedly anticipatory reference, so the Federal Circuit reversed the district court's summary judgment of anticipation because the reference did not disclose the elements as they were arranged in the claim.

More detail of Net MoneyIN, Inc. v. VeriSign, Inc. after the jump.

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In a recent decision, the Federal Circuit affirmed a district court's finding of inequitable conduct for one patent but reversed on a second, affirmed a finding of no invalidity of the second patent, but vacated the finding of infringement after modifying the district court's claim construction of a claim term.  The court also reversed the finding of indefiniteness of a third patent.

The court continued its recent discussions of when (if ever) an inference of intent to deceive is permissible to support an inequitable conduct finding where there is no independent evidence of such intent.  Here, the majority affirmed the district court's inference of intent based on high materiality, proof of knowledge of the withheld art, and a lack of credible explanation for the nondisclosure.  Judge Lourie dissented, arguing the majority conflated intent with materiality.  Given the apparent disagreement  on this issue, a case presenting the issue of when (or whether) such an inference is permissible seems to be a candidate for en banc review.

More detail of Praxair, Inc. v. ATMI, Inc. after the jump.

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In a recent decision, the Federal Circuit reversed a district court's grant of summary judgment of inequitable conduct against the patentee.  At issue was whether the patentee's failure to disclose a letter describing an aspect of the prior art constituted inequitable conduct.  The court reversed finding that the alleged infringer had failed to provide sufficient facts to support an inference of intent to deceive.

The defendant's theory involved a plan by the patentee to switch law firms once it appeared the first firm intended to disclose the letter, and preventing the second firm from discovering the existence of the letter.  The opinion provided a clear look of how the Federal Circuit will analyze inequitable conduct.  The court teed up its analysis by stating:

To successfully prove inequitable conduct, the accused infringer must present "evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO]."  Further, at least a threshold level of each element -- i.e., both materiality and intent to deceive -- must be proven by clear and convincing evidence.  And even if this elevated evidentiary burden is met as to both elements, the district court must still balance the equities to determine whether the applicant's conduct before the PTO was egregious enough to warrant holding the entire patent unenforceable.  Thus, even if a threshold level of both materiality and intent to deceive are proven by clear and convincing evidence, the court may still decline to render the patent unenforceable.

Most important to the court was that an accused infringer proves threshold levels of intent to deceive the PTO and materiality with clear and convincing evidence. The clear and convincing standard requires that the evidence be strong enough to show that an inference of intent to deceive is the "single most reasonable inference able to be drawn from the evidence."  In this case, there was simply "no evidence, direct or indirect," to support the inference the defendant sought to draw.  As a result, the finding of inequitable conduct was reversed.

More on Star Scientific, Inc. v. R.J. Reynolds Tobacco Co. after the jump.

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In a recent decision, the Federal Circuit reversed a jury verdict of willful infringement and a total award of over $100 million based on a modified claim construction.  The court also reversed the finding that one asserted claim was not anticipated, and remanded the case for a redetermination of infringement and whether the remaining claims were valid.

The court considered two competing constructions of the same claim terms, one by the district court in this case, and another by a second district court in an unrelated case involving the same patent.  The Federal Circuit found the second district court's construction to be the proper one, and therefore reversed the construction on appeal (and the related finding of infringement).

More detail of Finistar Corp. v. DirecTV Group, Inc. after the jump.

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In a decision last week, the Federal Circuit decided a case addressing the limitations of what constitutes "insolubly ambiguous" claim terms in order to amount to indefiniteness.  The district court held the asserted claims invalid because they impermissibly mixed two statutory classes of subject matter, as well as because they required construing the same term differently in the same claim for the claims to make sense.

The Federal Circuit reversed the invalidity holding, finding that while the claims were written in an "unconventional" format, that format did not result in mixing multiple classes of statutory subject matter in the same claim.  Further, while the court acknowledged that typically the same term is given the same construction throughout a claim (particularly when the second instance is prefaced with "the" or "said," thereby making reference to the first use), in this case, there was no "uniform language" surrounding the term that mandated an identical construction, and as a result, the claim was not indefinite.

Not all was good for the patentee, however, as the court affirmed the district court's claim construction.  The patentee stipulated that if the claim construction was affirmed, there was no infringement, and as a result, the district court's summary judgment of noninfringement was affirmed.

More detail of Microprocessor Enhancement Corp. v. Texas Instruments, Inc. after the jump.

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In a decision Friday, the Federal Circuit affirmed a final judgment of invalidity of all claims of a patent indefinite.  The claims had several means-plus-function clauses that were computer-implemented, however no algorithms for implementing the claimed functions were disclosed in the specification.  The district court held the claims invalid because there was no "structure" (i.e., algorithm) disclosed in the specification corresponding to the means-plus-function clauses.

The Federal Circuit affirmed, noting that when a means-plus-function clause is computer-implemented, there must be at least one example in the specification of an algorithm performing the function in order to meet the requirements of 35 U.S.C. § 112 ¶ 6 .  Without such an example, what is left is purely functional claim language, which is impermissible under the statute. 

Likewise, it is insufficient to argue that one of ordinary skill in the art would be able to implement the method.  While that may solve any § 112 ¶ 1 enablement concerns, it does not meet the statutory requirement of a disclosure of "structure" in § 112 ¶ 6.  As a result, the claims were held invalid as indefinite.

More detail of Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech. after the jump.

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In a second decision Friday, the Federal Circuit affirmed a district court's finding of 35 U.S.C. § 112, second paragraph indefiniteness.  The term was defined in the specification, however the district court held that definition was too subjective and unclear, largely because it relied on relative terms.  The proper scope was also not discernable from the figures, as they did not define the scope of the invention as compared to the prior art.

The Federal Circuit affirmed, finding that the claims were insolubly ambiguous.  The court held that one aspect of the proposed definition was not supported by the claim language or specification.  The other two aspects of the definition, while having support in the claims, nevertheless left one of ordinary skill in the art unable to "translate the definition into meaningfully precise claim scope."  As such, the court affirmed the finding of indefiniteness

The court also took the opportunity to discuss functional limitations in claims, and their relationship to indefiniteness.  While the court acknowledged that functional claim language is acceptable in some situations, such language sometimes does not "provide a clear-cut indication of the scope of subject matter embraced by the claim."  The court also invited the USPTO to require patent applicants to clarify the scope of functional limitations, stating:

When a claim limitation is defined in purely functional terms, the task of determining whether that limitation is sufficiently definite is a difficult one that is highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area). We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.

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In a decision today the Federal Circuit held that the district court had incorrectly determined that AllVoice Computing PLC's patent was invalid for indefiniteness and failure to meet the best mode requirement. In reaching its decision, the Federal Circuit determined that the lower court had used the prosecution history of the patent to interpret the claims too narrowly and that the alleged best mode violation was outside of the scope of the claim.

This Federal Circuit also cited to KSR as a reason for holding a patent to be valid. Specifically, the court cited the passage describing one of ordinary skill in the art as "a person of ordinary creativity, not an automaton" in support of its holding that the claims were not indefinite. Because of this "ordinary creativity," one of ordinary skill in the art would understand the scope of the means-plus-function limitations in the claims, and as a result, they were not indefinite.

More detail of AllVoice Computing PLC v. Nuance Commc'ns, Inc. after the jump.

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The Federal Circuit issued a ruling yesterday that provides some guidance on the issues of indefiniteness and inequitable conduct.  The court held that the term "near" was sufficiently definite for identifying the location of an incision in veterinary surgery, because the meaning could be adduced from the intrinsic evidence.  Further, the court held that as long as the examiner has time to consider a submission, there is no violation of the duty of disclosure, and that attorney argument interpreting a prior art reference was not a material misrepresentation when the prior art reference was before the examiner.

More details of Young v. Lumenis, Inc. after the jump.

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