Category: 112 - Definiteness  
 By: Jesus Hernandez, Blog Editor/Contributor 
TitleNautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (June 2, 2014).
IssueThis case, involving a heart­ rate monitor used with exercise equipment, concerns the proper reading of the statute’s clarity and precision de­ mand. According to the Federal Circuit, a patent claim passes the §112, ¶2 threshold so long as the claim is “amenable to construction,” and the claim, as construed, is not “insolubly ambiguous.” 715 F. 3d 891, 898–899 (2013).
Nautilus, Inc. at *1.
HoldingWe conclude that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement. In place of the “insolubly ambiguous” standard, we hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.
Id. at at *1.
Editor's Notes
For further insight, check out the Audio Brief of oral arguments in Nautilus, Inc. v. Biosig Instruments by clicking here.
Category: 112 - Definiteness   
 By: Jesus Hernandez, Blog Editor/Contributor 
TitleIn re Packard, No. 2013-1204 (Fed. Cir. May 6, 2014).
IssueThis case raises an important question: what standard for indefiniteness should the U.S. Patent and Trade- mark Office (“USPTO”) apply to pre-issuance claims? The parties point to no case in which we previously have addressed this question.
In re Packard at *2.
HoldingWe conclude 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 other- wise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.
Id. at *7.
Category: 112 - Definiteness  
By: Jesus Hernandez, Blog Editor/Contributor 

Category: 112 - Definiteness 


 By: Eric Paul Smith, Contributor

TitleChicago Bd. Options Exch, Inc. v. Int'l Secs. Exch., LLC, No. 2013-1326 (Fed. Cir. Apr. 7, 2014)
[1] [a] Whether "the district court erred by 'holding that' Hybrid is the accused product and 'precluding [International Securities Exchange )]ISE[)] from accusing CBOEdirect of infringement,'" Chicago Bd. Options Exch. at *9 (text added), and [b] whether "the district court improperly added additional limitations to [the Federal Circuit's] construction of 'automated exchange' [...] [thereby] violat[ing] the mandate rule," id. at *10-11 (text added).
[2] Whether "the district court [correctly] found that claim 2 was indefinite because the specification did not disclose a step-by-step algorithm for performing the claimed function." Id. at *12 (text added).
[1] [a] "[T]he court did not preclude ISE from accusing CBOEdirect of infringing. Rather, it expressly invited ISE to show that CBOEdirect was independent of the open-outcry aspects of Hybrid . . . ," id. at *10, and [b] "because this factual issue [i.e., whether the two systems were integrated or separate] was unresolved in the previous appeal, the trial court did not violate the mandate rule by allowing this unresolved issue to go to the jury," id. at *11 (text added).
[2] "The district court erred in inding that there was clear and convincing evidence that the specification did not disclose sufficient structure such that a person of ordinary skill in the art would know how to match on a pro rata basis. While it is true that the specification also discusses pro rata allocating, this does not detract from the disclosure of pro rata matching such that claim 2 is indefinite." Id. at *15.



Category: 112 - Definiteness 
 By: Jesus Hernandez, Blog Editor/Contributor
TitleAncora Tech., Inc. v. Apple, Inc., No. 2013-1378, -1414 (Fed. Cir. March 3, 2014).
[1] [Relying on examples in the specification and prosecution history], Apple has argued that the term “program” (which is to be verified for authorization under a license) is limited to an application program, i.e., one that relies on an operating system in order to run, thus excluding an operating system itself.
Ancora Tech., Inc. at *4 (text added).
[2] Apple also has argued that the terms “volatile memory” and “non-volatile memory” are indefinite because an example given in the specification is irreconcilable with the ordinary meaning of the terms [which refers to a “hard disk” as volatile memory, although “hard disks” are understood in the art to be non-volatile memory].
Id. at *4 (text added).
[1] A claim term should be given its ordinary meaning in the pertinent context, unless the patentee has made clear its adoption of a different definition or otherwise disclaimed that meaning. […] There is no reason in this case to depart from the term’s ordinary meaning [since the specification does not deviate from the ordinary meaning, and statements made during prosecution implicate a specific aspect of the program and are not sufficient to narrow the ordinary meaning of "program" to exclude an operating system].
Ancora Tech., Inc. at *5 (internal citation omitted, text added).
[2] [The specification acknowledges that a “hard disk,” which is generally understood as a non-volatile memory, can also act as a virtual volatile memory source. Therefore,] under the demanding standards for displacing as clear an ordinary meaning as exists in this case, we doubt that an ordinarily skilled artisan could have a reasonable uncertainty about the governing scope of the claims […].
Id. at *12 (text added).
By: Jesus Hernandez, Blog Editor/Contributor 
TitleTeva Pharma. USA, Inc. v. Sandoz, Inc., No. 2012-1567, -1568, 1569, -1570 (Fed. Cir. July 26, 2013).
Issue(s)[1 and 2: Definiteness] “Appellants argue that the term ‘molecular weight’ renders all of the asserted claims indefinite because it can refer to different measures, including Mp, Mw, and Mn. They contend that the scope of the claims varies significantly depending on the measure […] that Teva inconsistently defined “molecular weight” as Mw and Mp during prosecution of two of the familial patents […] that the specification does not resolve which molecular weight measure is intended […] [and] that their indefiniteness arguments apply equally to Group I and Group II claims.” Teva Pharma., at *6.
[3: Construction/Infringement] “The parties dispute whether the district court’s consideration of the percentages in conjunction with its consideration of the ‘approximately 6:2:5:1’ limitation constitutes a ‘derivative’ claim construction or a part of its infringement analysis. The former is a question of law; the latter is a question of fact.” Teva Pharma., at *16.
Holding(s)[1: Definiteness of Group I] “It is undisputed that Group I claims contain an ambiguity because their plain language does not indicate which average molecular weight measure is intended. Teva’s attempt to resolve this ambiguity hinges in part on the prosecution history. But two of its prosecution statements directly contradict each other and render the ambiguity insoluble.” Teva Pharma., at *8.
[2: Definiteness of Group II] “Instead of describing copolymer-1 in terms of a statistical measure, such as Mw, Group II claims recite the percentage of copolymer-1 molecules in a sample falling within an arbitrarily set molecular weight range. […] The scope of Group II claims is thus readily ascertainable. We hold that Group II claims are not invalid for indefiniteness.” Teva Pharma., at *10.
[3: Construction/Infringement] “We hold that whether the amino acid percentages in the accused products meet the ‘approximately 6:2:5:1’ limitation is a part of the district court’s infringement analysis.” Teva Pharma., at *16. 

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