Indefiniteness Before the PTAB
The US Court of Appeals for the Federal Circuit affirmed a district court’s ruling that a software term was a “nonce” term that invoked 35 U.S.C. § 112, sixth paragraph (i.e., a means-plus-function claim element). The Court...more
In a patent-infringement case involving fiber-optic-cable assemblies, Magistrate Judge Steven I. Locke (E.D.N.Y.) recently rejected defendants’ arguments that two terms in the patent claims were indefinite under 35 U.S.C. §...more
Fintiv, Inc. v. Paypal holdings, Inc., Appeal No. 2023-2312 (Fed. Cir. Apr. 30, 2025) In its only precedential patent opinion last week, the Federal Circuit affirmed a district court’s determination that the terms “payment...more
2024 was another busy year for district court decisions! There were multiple jury trials, case-dispositive design patent decisions, and claim construction decisions across a range of venues and at a range of case postures. We...more
On September 16, 2024, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion vacating and remanding a decision from the District Court of Minnesota which held the asserted claims of medical...more
Vascular Solutions LLC v. Medtronic, Inc., Appeal No. 24-1398 (Fed. Cir. Sept. 16, 2024) In our Case of the Week, the Federal Circuit evaluated certain heavily litigated claims directed to guide catheters. The patents...more
The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet...more
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more
The US Court of Appeals for the Federal Circuit addressed the tension between the intrinsic and extrinsic record in claim construction, holding that the intrinsic record should be relied on first. The Court therefore reversed...more
Earlier this year, the US Court of Appeals for the Federal Circuit reversed a district court decision for relying on an incorrect standard for indefiniteness. (Nature Simulation Systems Inc. v. Autodesk, Inc). Now, in...more
International Business Machines Corp. v. Zillow Group, Inc. et al., Appeal No. 2021-2350 (Fed. Cir. 2022) - In this week’s Case of the Week, the Federal Circuit affirmed a Rule 12(c) judgment on the pleadings that IBM’s...more
Referencing the use of antecedents from a “wherein” clause, the US Court of Appeals for the Federal Circuit reversed a district court’s claim construction and vacated its summary judgment ruling of indefiniteness that relied...more
University of Massachusetts v. L’Oréal S.A., Appeal No. 2021-1969 (Fed. Cir. June 13, 2022) - In an appeal from the U.S. District Court for the District of Delaware, the Federal Circuit addressed (1) whether the district...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision holding that the term “self-similar” was not indefinite and denying leave to file a sanctions motion. ClearOne, Inc. v....more
The US Court of Appeals for the Federal Circuit overturned a district court determination that the claim terms “resilient” and “pliable” were indefinite. The Federal Circuit found that the claims, while broad, were...more
Reversing a district court finding of indefiniteness under 35 U.S.C. § 112 ¶ 6, the US Court of Appeals for the Federal Circuit found that the district court erred by ignoring unrebutted evidence that the challenged claim...more
The US Court of Appeals for the Federal Circuit reversed a district court finding of indefiniteness for focusing solely on the language of the claims and ignoring the specification and prosecution history. Nature Simulation...more
The US Court of Appeals for the Federal Circuit affirmed a lower court’s findings of noninfringement, in part because the plaintiff had failed to prove the “way” element of the function-way-result test for a first...more
In determining whether a claim element invoked 35 USC § 112, ¶ 6, the US Court of Appeals for the Federal Circuit concluded that “module” was a nonce term and required sufficient corresponding structure in the patent...more
The US Court of Appeals for the Federal Circuit affirmed a district court’s determination that three patents directed to data synchronization were indefinite as lacking sufficient disclosed structure to support a means plus...more
In deciding whether use of the term “passive link” to define a connection between a computer terminal and a fax machine rendered a patent claim indefinite, the US Court of Appeals for the Federal Circuit affirmed the district...more
On January 6, 2021, US Patent and Trademark Office (PTO) Director Andrei Iancu, Commissioner for Patents Andrew Hirshfeld and Chief Administrative Patent Judge Scott Boalick issued a memorandum to the members of the Patent...more
Indefiniteness under U.S. patent law is a failure to satisfy the statutory requirements of 35 U.S.C. § 112(b), which reads: "The specification shall conclude with one or more claims particularly pointing out and distinctly...more
The Federal Circuit has spent the past few years applying the Supreme Court's most recent precedent, Nautilus, Inc. v. Biosig Instruments, Inc., on the indefiniteness standards in the patent statute. 35 U.S.C. § 112(b). The...more
SAMSUNG ELECTRONICS AMERICA v. PRISUA ENGINEERING CORP. Before Prost, Newman, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary: The Patent Trial and Appeal Board (“PTAB”) may not cancel claims on the...more