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Category: Indefiniteness


Design Patents and Indefiniteness
August 20, 2018
Post by Luke T. Mohrhauser
Luke T. Mohrhauser             In a recent decision, the Federal Circuit addressed indefiniteness and enablement issues under 35 U.S.C. § 112 as they apply to design patent applications. In In re: Ron Maatita, the court held that two-dimensional drawings in design patents can meet the definiteness and enablement requirements under § 112, and that the .......
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PTAB Opinion Provides Reminder that Indefiniteness Rejections Must Establish a Prima Facie Case
January 26, 2018
Post by Jonathan L. Kennedy
In a recent USPTO Patent Trial and Appeal Board (PTAB) opinion, the PTAB reversed an Examiner's indefiniteness rejection as the it failed to establish a prima facie case of indefiniteness. InEx Parte Kimura, Appeal No. 17-1293 (PTAB Jan. 25, 2018), the claims were rejected for reciting, "normal pumping operation." The rejection stated the term was indefinite because "[t]he claims fail to define what a no.......
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Post-Grant Reviews under the America Invents Act
January 05, 2017
Post by Blog Staff
The America Invents Act implemented the Post-grant Review (PGR) process as a new means of challenging existing patents. PGR differs from Inter Partes Review (IPR) in that PGR allows for a wider array of invalidity challenges. One example of a new challenge allowed under PGR is the ability to challenge the claims as being indefinite. However, Post-grant Review is only available for patents filed on or afte.......
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Teva v. Sandoz Revisited
June 25, 2015
Post by Blog Staff
Teva v. Sandoz Revisited On June 18, 2015, a Federal Circuit panel reaffirmed that the key claim of the patent at issue inTeva v. Sandoz, was invalid as indefinite. The procedural posture and technical background leading up to this decision is discussed in aprior blog post.  The Federal Circuit ultimately concluded that they are still allowed to address if the question of .......
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Supreme Court Defines Scope of Definiteness Required in Patent Claims
June 02, 2014
Post by Blog Staff
Today the U.S. Supreme Court issued its decision in Nautilus, Inc. v. Biosig Instruments, Inc. defining the standard for definiteness necessary to meet the requirements of 35 U.S.C. Section 112, second paragraph. The decision unanimously rejected the "insolubly ambiguous" standard previously employed by the Federal Circuit to determine whether patent claims meet the statutory requirement to "partic.......
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Supreme Court Issues Indefiniteness and Inducement Decisions
June 02, 2014
Post by Blog Staff
The Supreme Court this week issued its decisions in two much anticipated IP cases. The Court's decision in Limelight Networks v. Akamai Tech. concludes that at least one underlying act of direct patent infringement must be present for a claim of inducement of infringement. In Nautilus v. BioSig the Court instituted a new standard for indefiniteness, supplanting the existing "insolubly ambiguous" st.......
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"Insolubly Ambiguous" Standard not Applicable at the USPTO
May 09, 2014
Post by Blog Staff
InIn re Packard the Federal Circuit held that the USPTO need not follow the insolubly ambiguous standard in order to satisfy a prima facie rejection for indefiniteness. Rather, the Federal Circuit held that when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the clai.......
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2014 Supreme Court Cases Relating to Intellectual Property
January 16, 2014
Post by Blog Staff
On January 10, 2014 the Supreme Court agreed to review a variety of intellectual property cases in the upcoming session, including two patent cases, a copyright case, and a trademark case (including Lanham Act claim). A brief overview of these cases is provided and more detail will be available once decisions are entered by the Court. Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S., No. 12-786.) Ques.......
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Bring on the New Year - What is in Store for IP in 2014?
December 31, 2013
Post by Blog Staff
Happy New Year to all of our FilewrapperÒ followers! We hope 2013 was a productive year and wish you the best in 2014. As the New Year quickly approaches we would like to share with you a few predictions for 2014 for you to look forward to and for which to prepare! · Increased opportunities for quasi-litigation under AIA. Various new mechanisms are available to challenge patents under the Am.......
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Intrinsic Evidence Can Provide Adequate Support to Overcome Indefiniteness
May 01, 2013
Post by Blog Staff
In Biosig Instruments, Inc. v. Nautilus, Inc., the Federal Circuit reversed a decision by the U.S. District Court for the Southern District of New York finding a patent invalid for indefiniteness, relying on intrinsic evidence. Biosig Instruments, Inc. (“Biosig”) is the assignee of U.S. Patent No. 5,337,753 (“the ’753 patent”). The ’753 patent is directed to a heart rate monit.......
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New and Useful - February 21, 2013
February 21, 2013
Post by Blog Staff
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Federal Circuit reaffirms anticipatory reference must have all elements as arranged in the claim
October 31, 2008
Post by Blog Staff
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 t.......
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High materiality without explanation for nondisclosure leads to inference of intent to deceive
October 17, 2008
Post by Blog Staff
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 it.......
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No evidence of intent to deceive, no inequitable conduct
September 10, 2008
Post by Blog Staff
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.......
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Two district courts, one correct claim construction; $103 million damage award vacated
April 25, 2008
Post by Blog Staff
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 .......
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Same claim term can be interpreted differently in the same claim if specification warrants
April 09, 2008
Post by Blog Staff
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 clai.......
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Computer-implemented means-plus-function claim invalid when no algorithm disclosed in specification
March 31, 2008
Post by Blog Staff
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.......
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Claims to "fragile gel" indefinite even though term defined in specification
January 28, 2008
Post by Blog Staff
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.......
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"Ordinary creativity" of one of ordinary skill in the art used to show claims not indefinite
October 15, 2007
Post by Blog Staff
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 violatio.......
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"Attorney argument" and late disclosure not enough to support inequitable conduct finding
June 28, 2007
Post by Blog Staff
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 su.......
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Means-plus-function claim must recite some structure, "known equipment" not enough
June 18, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed a district court's finding of invalidity of a several claims of a patent for indefiniteness under 35 U.S.C. § 112, ¶ 2. The patent specification did not describe a corresponding structure for the claim limitation "control means" as required by 35 U.S.C. § 112, ¶ 6, but instead stated that "known equipment" could be used.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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