Federal Circuit Affirms Discovering of Indefiniteness in Dispute Over Cellular Telephone and Digicam Patents

by Dennis Crouch

The U.S. Courtroom of Appeals for the Federal Circuit lately affirmed a discovering by  Western District of Texas Choose Alan Albright that sure claims in two patents owned by WSOU Investments LLC had been invalid as indefinite underneath 35 U.S.C. §112.  WSOU Invs., LLC v. Google LLC, Nos. 22-1066, -1067 (Fed. Cir. Sept. 25, 2023).  Though the choice is designated nonprecedential, it consists of various fascinating classes on the necessities for definiteness and disclosure of corresponding construction underneath 35 U.S.C. §112.

The Expertise at Situation

The primary patent at subject was U.S. Patent No. 7,304,563 (“the ‘563 patent”), entitled “Alarm clock.” This patent claimed an alarm clock characteristic for cell phones the place the alarm concerned initiating a connection to a different gadget over a community to trigger that gadget to sign the alarm.

Declare 16 is is recited in means-plus-function type:

issuing means for issuing an alert when the present time matches the alert time by initiating a connection to a different communication terminal over a community in order to trigger that different terminal to regionally sign the incidence of the connection incoming thereto

‘563 Patent, declare 16. Declare 16 is clearly written in means-plus-function type, however the focus of the attraction was on declare 1, which was considerably related.  The important thing distinction although is that the declare 1 limitation was directed to “an alerting unit” slightly than an “issuing means:”

an alerting unit configured to subject an alert when the present time matches the alert time, the alerting unit being configured to subject the alert by initiating a connection to a different communication terminal over a community in order to trigger that different terminal to regionally sign the incidence of the connection incoming thereto

‘563 Patent, declare 1.  Choose Albright discovered each claims to be in means-plus-function type and the Federal Circuit affirmed on attraction.

In patent regulation, “means-plus-function” (MPF) claiming is a method to outline a component of a patent declare by the perform it performs slightly than by its particular construction. One of these claiming is ruled by 35 U.S.C. § 112(f), which permits patentees to precise a declare limitation as “a method or step for performing a specified perform.” When a declare is interpreted underneath § 112(f), the declare restricted to the precise construction disclosed within the specification and equivalents thereof.   This limitation to really disclosed construction (and equivalents) severely limits the scope of MPF claims that always appear a lot broader when learn within the summary.  However, the great thing about MPF evaluation is that it’s designed to protect the validity of claims that is likely to be unduly indefinite, not enabled, and even extent to ineligible subject material.   Patentees typically fall into the frequent lure of utilizing of MPF limitations with out offering sufficient construction throughout the specification.  If no construction is disclosed within the specification for a means-plus-function (MPF) declare, the declare is deemed indefinite and due to this fact invalid. In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994).

The Federal Circuit has established a two-step framework for figuring out whether or not a declare limitation is topic to MPF building underneath 35 U.S.C. 112(f). First, the court docket should decide if the limitation makes use of the time period “means.” If that’s the case, a rebuttable presumption is triggered that 112(f) applies. Williamson v. Citrix On-line, LLC, 792 F.3d 1339 (Fed. Cir. 2015). Previous to Williamson, there was a powerful presumption related to use of the phrase “means.”  Particularly, courts typically assumed {that a} declare time period that didn’t use the phrase “means” was not topic to § 112(f) interpretation. Williamson altered this panorama by holding that the presumption could be shortly overcome, even when the phrase “means” just isn’t current, if the declare time period fails to recite sufficiently particular construction or else recites a perform with out reciting enough construction for performing that perform.

In Williamson, the court docket famous that patentees had begun utilizing numerous “nonce phrases” that had been successfully non-limiting placeholders designed to keep away from MPF interpretation.  Right here, as an example, the claimed “alerting unit” is roughly equal to a means-for-issuing-an-alert.  The presumption in opposition to MPF can shortly be overcome in conditions the place the patentee makes use of a nonce phrase to designate the ingredient if the limitation typically fails to recite sufficiently particular construction.

Wanting significantly at declare the court docket first famous the rebuttable presumption in opposition to means-plus-function therapy since Declare 1 is directed to a “unit” and doesn’t use the time period “means.”  In rebutting the presumption, the court docket agreed with Choose Albright that within the context of the claims and specification, the time period “unit” was outlined solely by the perform it performs, slightly than connoting any particular construction.  In its evaluation, the court docket held that the language surrounding “alerting unit” within the declare consisted of purely useful language that supplied no structural context. Phrases like “configured to subject an alert” and “initiating a connection” had been purely useful.  The court docket additionally seemed to the specification to see how the “alerting unit”  phrase was used — discovering that it was additionally described in the identical purely useful phrases because the declare language.  Ultimately, the appellate panel agreed with the district court docket that “unit” and “means” had been used interchangeably within the patent, indicating “unit” was a generic placeholder slightly than structural time period.

The patentee WSOU had provided knowledgeable testimony on level, however the appellate court docket rejected the extrinsic proof for its try to be a “hole filler.”

To the extent that WSOU argues that the ‘interpretation of what’s disclosed within the specification have to be made within the gentle of information of 1 expert within the artwork,’ it invitations us to improperly use the data of a talented artisan as a gap-filler, slightly than a lens for interpretation.  WSOU argues {that a} expert artisan would ‘perceive the construction concerned with a cell phone utilizing GSM ….

Nonetheless, these arguments are irrelevant as The indefiniteness inquiry is anxious with whether or not the bounds of the invention are sufficiently demarcated, not with whether or not one among odd talent within the artwork could discover a method to follow the invention.

WSOU (inner citations and quotations eliminated).  This quote from the appellate panel rejects WSOU’s try to make use of knowledgeable testimony concerning PHOSITA to beat the shortage of structural disclosure within the specification. The court docket emphasizes that gaps within the specification can’t be crammed by expert artisan data throughout the 112(f) evaluation.

Having decided that declare 1’s “unit” was in MPF type, the court docket then moved to the subsequent step — in search of the corresponding construction throughout the specification to carry out the claimed perform.  On attraction, the appellate panel once more agreed with Choose Albright that no such construction had been disclosed.  The court docket examined the disclosed processor, communication engine, antenna, and communication protocols , however discovered no clear hyperlink between these parts and the claimed perform of “initiating a connection to a different communication terminal over a community.” Somewhat, the specification disclosed these constructions in a basic sense with out particularly tying them to the community connection perform. Merely mentioning basic parts is inadequate to offer corresponding construction for a means-plus-function limitation. As a result of the patentee did not disclose sufficient construction for the “alerting unit” limitation underneath 112(f), Declare 1 was held invalid as indefinite.

For the ‘563 patent, the court docket decided that the “issuing means” limitation in Declare 16 was topic to 35 U.S.C. §112(f), which governs interpretation of means-plus-function declare limitations. The court docket recognized two features for this means-plus-function limitation: (1) initiating a community connection to a different gadget, and (2) inflicting signaling means to regionally sign the person. The court docket held that the specification did not disclose enough construction equivalent to both of those features, and due to this fact the declare was indefinite underneath §112(f). The court docket reached the identical conclusion concerning the same “alerting unit” limitation in Declare 1.

I quibble with the Federal Circuit’s doctrine on MPF indefiniteness. Particularly, the court docket’s precedent creates an if-then strategy: if no enough construction then routinely indefinite.  I might recommend an extra step asking whether or not the declare offers moderately sure scope, recognizing that 112(f) was significantly designed to allow flexibility utilizing narrowing of claims slightly than invalidation.

the plurality of components [including] a primary half closest to a middle, a 3rd half farthest from the middle, and a second half in between the primary half and the second half.

‘681 patent, declare 1 (simplified).  You may see that the declare requires a “second half” positioned between the primary and second half.  Nonsense.  It’s fairly clear to me that the patentee meant (however didn’t declare) that the second half can be between the primary and third components.   Sadly for the patentee, this actual typo was additionally discovered throughout the specification, and the patent didn’t embody a transparent drawing exhibiting the right side.

The court docket emphasised that it can’t redraft claims to contradict their plain language, even to make them workable.

We’ve defined repeatedly and persistently, ‘courts could not redraft claims, whether or not to make them operable or to maintain their validity.’ Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004). Even ‘a nonsensical end result doesn’t require the court docket to redraft the claims of the [patent at issue]. Somewhat, the place as right here, [when] claims are inclined to just one affordable interpretation and that interpretation ends in a nonsensical building of the declare as a complete, the declare have to be invalidated.’ Id.

Slip OP.

The patents right here had been each initially owned by Nokia.  They had been later transferred to WSOU, a patent assertion entity related to Craig Etchegoyen, a former CEO of one other patent assertion entity, Uniloc.