Thursday, April 03, 2008

CAFC reverses indefiniteness finding of district court

Relevant to the contention of Bessen and Meurer about patent claims not providing notice (claims being indefinite), the CAFC in Microprocessor Enhancement v. TI and Intel reversed a district court finding of indefiniteness, deciding the claims were not indefinite. The CAFC's language was of interest:

Although this seeming preamble within a
preamble structure is unconventional, its effect on the definiteness of claim 1 lacks the
conclusiveness with which King Claudius’s guilt is established by his reaction to
Hamlet’s play within a play. See William Shakespeare, Hamlet act 3, sc. 2. Method
claim preambles often recite the physical structures of a system in which the claimed
method is practiced, and claim 1 is no different.

Of objections to a different claim, the CAFC wrote:

Functional language may also be employed to limit the claims without using the means-plus-function format.
E.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (analyzing
functional language as an additional limitation to an apparatus claim for an in-line
skate). Moreover, where the claim uses functional language but recites insufficient
structure, § 112, ¶ 6 may apply despite the lack of “means for” language. See, e.g.,
Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703–04 (Fed.
Cir. 1998) (discussing cases). Notwithstanding these permissible instances, the use of
functional language in a claim may “fail ‘to provide a clear-cut indication of the scope of
subject matter embraced by the claim’ and thus can be indefinite.” Halliburton, 514 F.3d
at 1255 (quoting In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971)).


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