PATENTBUSTERS® Tip

By Howard Skaist, Berkeley Law & Technology Group

This is the second article of a three-part series sharing some of Berkeley Law & Technology Group’s PATENTBUSTERS® tips. These tips suggest tools that companies can use to efficiently devalue or invalidate an asserted patent, potentially saving time and money or even avoiding a trial or leading to a settlement. Tip three will follow in a future issue of LOT Quarterly.

 

Indefiniteness due to mixed statutory category claiming

In situations to neutralize an adverse patent (e.g., otherwise devalue it), significant legal analysis and/or technical analysis may take place. To establish invalidity, for example, a significant amount of time and money may be expended to perform searches of the state of the technical art. Likewise, significant time and money may be expended on the analysis of search results in order to then establish invalidity through a legal analysis that supports (e.g., demonstrates) anticipation or obviousness.

These efforts eat up valuable time and cost money.

In contrast, PATENTBUSTERS® tips refer to various approaches companies can use to neutralize an adverse patent that may involve less time and expense. In other words, these tips target potential low-hanging fruit. Such approaches are not limited to patents asserted by non-practicing entities (NPEs), but they may be particularly effective in such situations. Of course, PATENTBUSTERS® tips are also not limited to invalidity issues, since an adverse patent may be neutralized other ways as well.

That brings us to our second PATENTBUSTERS® tip: indefiniteness due to mixed statutory category claiming.

A surprising number of patent practitioners are not aware of some of the more formal differences that exist between method claims and apparatus claims and the consequences of not maintaining that distinction in a manner that is clear in the language of the claim. To refresh on basics, whereas an apparatus claim covers make, use, and sell (and, of course, import and offer to sell), a method claim, by its very nature, covers either making (e.g., manufacturing) or using. Many issued claims are not drafted so such a distinction is clear from the language of the claim. Therefore, a basis may exist to invalidate the claim or claims as indefinite without spending time searching and analyzing prior art (which, of course, may be time-intensive and costly).

To illustrate, consider this claim:

The system of claim 2, wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters. (emphasis added)

To an untrained eye, this claim may seem fine on its face. However, in the Federal Circuit case IPXL Holdings v. Amazon.com (Fed. Cir. 2005), this claim was held invalid for being indefinite.

The Federal Circuit reasoned that such a claim is not sufficiently precise to put other parties on notice as to infringement. That is, it is unclear whether a system in which a user can change predicted information infringes or if infringement requires actual use by the user to change the predicted transaction information or accept the displayed transaction type and transaction parameters. That is, the scope of protection has been muddled through claim language that might, in an apparatus claim, for example, suggest that infringement requires use or operation of the apparatus.

This probably happens in the rush to get a patent filed or the strong desire to get claims issued quickly. Practitioners (and examiners) may more often than expected overlook this fine point. Thus, with this PATENTBUSTERS® tip, an adverse patent may be devalued significantly or even neutralized in a relatively cost-effective manner.

One issue, however, is what language will cause the claim to be indefinite. There have been several Federal Circuit cases in the years since IPXL, some finding the claims to be indefinite and some not finding the claims to be indefinite. A crucial analytical point revolves around functionality. In other words, functional claims are permissible and not indefinite. In contrast, apparatus claims that recite method “actions” are indefinite since the intended scope of protection is unclear.  Nonetheless, the distinction between function and action is a fine one and subject to at least some uncertainty, as the cases demonstrate.

For example, in Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367 (Fed. Cir. 2008), the court determined that a claim directed to a computer processor, including instructions for performing various functions such as “performing a Boolean algebraic evaluation,” “producing an enable-write,” “enabling,” “disabling,” and “determining” was definite. The court found that the claim was “clearly limited to a…processor possessing the recited structure and capable of performing the recited functions.”

Similarly, in HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270, 101 U.S.P.Q.2d 1518 (Fed. Cir. 2012), a claim drawn to a mobile station for use with a network was held to be definite. Although the claim recited “storing,” “holding,” and so forth, these were deemed to merely establish functions for the environment in which the mobile station operates.

In UtimatePointer v. Nintendo, (Fed, Cir. 2016), one of the claims at issue recited:

a processor coupled to said handheld device to receive said generated data related to the distance between a first point and a second point and programmed to use the distance between the first point and the second point to control the feature on the image.

However, the data-generating limitations were not indefinite since they indicate that the associated structures have the recited capability and do not require that any data be actually generated by the user.

By contrast, in In re Katz, 639 F.3d 1303 (Fed. Cir. 2011), claims covering a system and reciting an “interface means for providing automated voice messages…to certain of said individual callers, wherein said certain of said individual callers digitally enter data” (emphasis added) were indefinite.

Likewise, in Rembrandt Data Technologies v. AOL, 641 F.3d 1331 (Fed. Cir. 2011), the following claim was held to be invalid as indefinite:

A data transmitting device for transmitting signals corresponding to an incoming stream of bits, comprising:

first buffer means for partitioning said stream into frames of unequal number of bits and for separating the bits of each frame into a first group and a second group of bits;

fractional encoding means for receiving the first group of bits of each frame and performing fractional encoding to generate a group of fractionally encoded bits;

second buffer means for combining said second group of bits with said group of fractionally encoded bits to form frames of equal number of bits; trellis encoding means for trellis encoding the frames from said second buffer means; and

transmitting the trellis encoded frames. 

It bears emphasis, that in general, vis-à-vis a party asserting a patent, for those seeking to devalue the patent, the uncertainty that exists is a benefit. To restate, to the extent that a claim is drafted in a manner that raises an indefiniteness issue as discussed above, the party asserting the patent will be challenged to establish that the claim is not indefinite.

About the Author

Howard Skaist is a partner with and the founder of Berkeley Law & Technology Group, LLP (BLTG). BLTG was started in 2003 by Mr. Skaist after he had been employed as the Director of Patents for Intel Corp. BLTG has a total of twelve patent lawyers and handles all aspects of intellectual property law practice, including patent law. Mr. Skaist has also been an adjunct professor at Boalt Hall Law School in Berkeley, CA, at Willamette School of Law in Salem, OR, at Lewis and Clark Law School in Portland, OR, and at Albany Law School.