By Dennis Crouch
Intellectual Ventures I LLC v. T-Mobile USA, Inc. (Fed. Cir. 2018)
Delaware Chief Judge Stark ruled on summary judgment that T-Mobile did not infringe IV’s U.S. Patent No. 6,640,248. The district court also found claim 20’s means-plus-function limitation left that claim indefinite. On appeal, the Federal Circuit reversed claim construction and thus vacated on non-infringement — however, the court affirmed on indefiniteness.
Indefiniteness: The indefiniteness doctrine is codified within 35 U.S.C. 112(b), which requires each claim be “particular” and “distinct.” The Supreme Court’s most recent statement on the doctrine requires that claims delineate their scope with “reasonable certainty.” Although I have not checked into the stats recently, my somewhat educated prior is that the district courts have followed the Federal Circuit’s lead in usually giving issued patents a ‘pass’ on definiteness — much like utility. The one major exception is the area of of means-plus-function claims.
35 U.S.C. 112(f) allows for claims to include particular elements “expressed as a means … for performing a specified function without the recital of structure, material, or acts in support thereof.” However, when MPF style is used the Federal Circuit requires that at least one example of a the corresponding omitted structure be described within the patent specification.Continue Reading ...