District court finding of indefiniteness reversed by CAFC in ULTIMATEPOINTER
UltimatePointer, LLC (“UltimatePointer”) appeals
from a final judgment in favor of Nintendo Co., Ltd. and
Nintendo of America, Inc. (collectively, “Nintendo”) after
the district court granted summary judgment (1) that
Nintendo did not infringe claims 1, 3, 5, 6, and 12 of
UltimatePointer’s U.S. Patent 8,049,729 (the “’729 patent”),
UltimatePointer, LLC v. Nintendo Co, No. 2:14-cv-
00865-RSL, 2014 WL 7340604, at *1–2 (W.D. Wash. Dec.
22, 2014) (“Infringement Opinion”); and (2) that claims 1,
3, 5, and 6 of the ’729 patent are invalid as indefinite,
UltimatePointer, LLC v. Nintendo Co., 73 F. Supp. 3d
1305, 1308–09 (W.D. Wash. 2014) (“Indefiniteness Opinion”).
For the reasons that follow, we affirm the judgment
of noninfringement and reverse the determination of
As to indefiniteness, Teva is not cited for evidentiary standards,
but Nautilus is cited:
We review a district court’s ultimate determination
that a claim is invalid as indefinite under 35 U.S.C. § 112
¶ 2 de novo,2 although, as with claim construction, any
factual findings by the district court based on extrinsic
evidence are reviewed for clear error. Eidos Display, LLC
v. AU Optronics Corp., 779 F.3d 1360, 1364–65 (Fed. Cir.
2015). Neither party alleges that the district court relied
on extrinsic evidence in reaching its conclusion that the
claims are invalid as indefinite, and so our review is de
Section 112 requires that a patent specification “conclude
with one or more claims particularly pointing out
and distinctly claiming the subject matter which the
applicant regards as his invention.” The Supreme Court
has read this provision to require that “a patent’s claims,
viewed in light of the specification and prosecution history,
inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).
As to the AIA, a footnote observes:
Because the ’729 patent was filed before the adoption
of the Leahy-Smith America Invents Act, Pub. L. No.
112-29, § 3, 125 Stat. 284, 285–93 (2011), the prior version
of § 112 governs. See Fleming v. Escort, Inc., 774
F.3d 1371, 1374 n.1 (Fed. Cir. 2014).
Of the issues in indefiniteness:
We agree with UltimatePointer that claims 1, 3, 5,
and 6 of the ’729 patent are not invalid as indefinite, as
the claims do reflect the capability of the claimed apparatus.
Unlike IPXL and similar cases, the claims at issue
here make clear that the “generating data” limitation
reflects the capability of that structure rather than the
activities of the user.
In reaching this conclusion, review of our precedent is
instructive. In IPXL, our first case to address the claiming
of two statutory classes, the claim at issue recited a
system including input means, wherein “the user uses the
input means” IPXL, 430 F.3d at 1384. The claims were
unclear whether infringement occurred when the system
was created, or when the user used the system. See id.
We also affirmed a district court’s conclusion finding a
claim invalid as indefinite for being directed to two statutory
classes in In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011).
In that case, the claims were directed to a system with an
interface for providing automated voice messages to
certain callers, “wherein said certain of said individual
callers digitally enter data.” Id. Although the patentee
argued that this clause indicated functional capability, we
held that the clause was “directed to user actions, not
system capabilities.” Id.
In HTC Corp. v. IPCom GmbH & Co., KG, we also
reversed summary judgment of indefiniteness when the
claim was drawn to a mobile station for use with a network.
667 F.3d 1270, 1277 (Fed. Cir. 2012). The claim at
issue included “storing,” “holding,” and other functional
limitations, id. at 1274, but we concluded that those
limitations “merely establish those functions as the
underlying network environment in which the mobile
station operates.” Id. at 1277. As the limitations only
described the environment in which the network operated
rather than indicating a method of use, however, the
claim was not indefinite.
The claims here are most similar to those at issue in
MEC and HTC Corp. Like those claims, the “data generating”
limitations only indicate that the associated structures
have this capability (for example, the image sensor
and processor in claim 1) and do not require that any data
be actually generated by the user.