Fletcher YoderEstablishing indefiniteness requires more than identifying “unanswered questions” based on the claim language, standing alone and actions by PTO Examiners are entitled to appropriate deference as official agency actions.
The Board cannot cancel contested claims based on indefiniteness during inter parties review, but, if the claims are construable, the Board may invalidate the claims based on prior art under 35 U.S.C. § 102 and § 103.
When drafting, ensure claim terms are defined in the specification, even if applicant thinks they are generally known in the art. Also consider providing example calculations or measurements if included in claims. When litigating, ensure a party provides a counter argument to each argument presented, including expert testimony. Consider providing arguments in the alternative.
Claims are indefinite if, read in light of the specification and the prosecution history, the claims fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Use claim terms that are defined in the specification. Further, ensure that arguments during prosecution are not contradictory
Claims may invoke § 112 ¶ 6 and be held indefinite if, read in light of the specification, the claims fail to provide sufficient structure for performing a function. In cases where the function is performed by a general purpose computer, an algorithm may be required to disclose how the computer performs to accomplish the function.
Patents with claims involving terms of degree must provide objective boundaries for those of skill in the art.
When reviewing a district court’s findings of subsidiary factual matters made in the course of it construction of a patent claim, the Federal Circuit must apply a “clear err,” not a de novo, standard of review.
The Fed. Circuit affirms the District Court’s application of 35 U.S.C. § 112, 6th paragraph, despite an absence of ‘means’, and determines the claims to be indefinite due to a lack of sufficient structure in the disclosure.
Disparaging comments about some techniques in the specification may be interpreted as a disclaimer of claim scope during claim construction. Functional language in an apparatus claim that is not directed to the capabilities of the apparatus may render a claim indefinite.