• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patents
      • Patent Consultation
      • Patent Search Service
      • Patent Application Service
      • Patent Prosecution
      • Utility Patents
      • Design Patents
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademarks
      • Trademark Search
      • Trademark Application Services
      • Trademark Prosecution
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Patent Infringements / Attacking patent claims as indefinite made easier

Attacking patent claims as indefinite made easier

October 2, 2014 by James Yang

Indefiniteness Made EasyIn Interval Licensing, LLC v. AOL, Inc. (Fed. Cir. Sept. 10, 2014), the Federal Circuit invalidated a patent claim as being indefinite under a new standard set forth by the Supreme Court of the United States in Biosig v. Nautilus (S. Ct. April 28, 2014). Interval Licensing is instructional not just for evaluating indefiniteness under the new standard, but also on how to write claims for a patent application that contains two or more embodiments of the invention.

Before Nautilus, it was difficult to invalidate a patent based on the definiteness requirement that the patent claims “particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.” The reason it was so difficult was that the Federal Circuit had set the bar for evaluating indefiniteness very high.  Previously, the claim need only be interpreted so that the court can ascribe some meaning to the terms of the patent’s claims.  A claim was indefinite and invalid only if the claim was “insolubly ambiguous” or not “amenable to construction.” (See Takeda v. Zydus).

In Nautilus, the Supreme Court rejected that standard and lowered the bar for finding a claim indefinite.  The Supreme Court held that a patent claim is indefinite if the claim fails to inform those skilled in the art about the scope of the invention “with reasonable certainty.”  By doing so, the Supreme Court lowered the standard to invalidate an ambiguous term from being “insolubly ambiguous” to “reasonable certainty.”  It is now no longer acceptable that the specification be merely capable of informing one as to some possible meaning of a claim term, but instead it must inform “with reasonable certainty.”

Interval Licensing is the first case where the Federal Circuit applied the holding of Nautilus and provided an example of what an indefinite claim looks like under the new Supreme Court standard.  In Interval Licensing, the claims were directed to use of the unused real estate on a person’s computer screen.  The specification described two different embodiments.  In a first “screen saver” embodiment, the patent application contemplated use of the entire screen if the computer remained idle for a period of time and displayed custom content instead of a generic screen saver.  In a second “wall paper” embodiment, the patent application used areas of the screen other than the primary viewing or interaction area of the screen (e.g., background area) to display the custom content.

The claims required that custom content be displayed on the screen in an “unobtrusive manner that does not distract the user.”  The court found that term was “purely subjective” and then looked to the patent and prosecution history to see if an objective standard was provided to define that term to avoid indefiniteness.  The plaintiff relied on the definition given in one example of the wallpaper embodiment to argue the claim was definite while the defendant relied on conflicting meanings given in both the wallpaper and screen-saver embodiments to argue the claim was indefinite. The Federal Circuit could not determine whether one or both of the embodiments should be used to construe the phrase based on the prosecution history and the specification itself, found no objective criteria for the subjective claim requirement and refused to accept one example out of a long specification as defining the claim term.  For this reason among others, the Federal Circuit found that all claims using the “unobtrusive manner” phrase to be indefinite, and thus those claims including that phrase invalid.

Under the old rule, the “unobtrusive manner” claim language may not have been “insolubly ambiguous” and may have been “amenable to construction.” The patent application and prosecution history did provide guidance as to “some” meaning of the term, and thus the claim could have avoided the indefinite attack.  A court could ascribe meaning to the term by choosing to use one example from one embodiment as urged by the plaintiff to ascribe some meaning to the phrase.  By comparing the potential results under the old rule and holding of the case under the new rule, the Federal Circuit appears to have lowered the bar for finding claims invalid for being indefinite as instructed by the Supreme Court.

In light of this new standard for indefiniteness, if a patent application includes two or more different embodiments but has claims written in such a way that it is unclear which embodiments should be used to construe a claim term or provide meaning to a particular claim term, then the claims including that term may be invalid for being indefinite.

One claiming strategy to guard against indefiniteness is to present an omnibus claim broad enough to cover two or more of the different embodiments and then add dependent claims that separately cover each of the embodiments.  If the omnibus claim is found to be indefinite, hopefully the dependent claims will provide enough definition to survive such an attack.  Another claiming strategy would be to include an omnibus claim and also include other separate independent claims directed to each of the preferred embodiment.  However, presenting an independent claim for each of the embodiments may be cost prohibitive if there are too many different embodiments.  A third option would be to use a “means-plus-function” claim under 35 U.S.C. §112 ¶(f), which encompasses every embodiment that the patent specification identifies as performing the claimed function,  recognizing that this type of claim has other issues and limitations.  Another further option would be to expressly define the claim term using an objective criteria with a close review of the definition and criteria to ensure it is likely to be definite and not overly narrowing.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

Related Articles for Patent Infringement

  • Basics of writing a patent claim for a patent application
  • Avoiding Patent Infringement
  • Can I copy my competitor’s product?
  • Can I copy my competitor’s Product? (Design Patent)
  • Attacking patent claims as indefinite made easier
  • Reducing Scope of Doctrine of Equivalents Via Ensnarement Defense
  • Broken chain of priority invalidates patent
  • Combine Claim Elements to Avoid Infringement
  • How to invalidate a patent based on a restriction requirement
  • Active inducement of infringement in physician patient relationships
  • Irreparable harm easier to prove for grant of patent based injunction
  • Everyone in the supply chain could be sued for patent infringement
  • Penalty for False Patent Marking
  • CAFC defines competitive injury for false patent marking
  • Process patent blocks importation of product
  • Facebook
  • Twitter
  • LinkedIn

Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?
  • Why patent your invention in a bad economy?

Patent Book

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Patent Consultations
Patent Searches
Patent Applications
Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Overview
Trademark Search Services
Trademark Application Services
Trademark Prosecution Services
Trademark Enforcement Services
Trademark Defense Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney