GE LIGHTING SOLUTIONS, LLC v. LIGHTS OF AMERICA, INC. (Fed. Cir. 2016) (NP) – General distinctions over the prior art do not provide objective boundaries for terms of degree

by | Oct 27, 2016 | [sub] clarity, Indefiniteness

General distinctions drawn between the claimed invention and the prior art are not sufficient to provide any objective boundaries for terms of degree. Here, for example, the patentee’s argument during prosecution that prior art disk-shaped and plate-shaped heat sinks...

COX COMMUNICATIONS, INC. v. SPRINT COMMUNICATION COMPANY (Fed. Cir. 2016) (P) – An ambiguous but inconsequential claim term does not render the claim as a whole indefinite

by | Sep 23, 2016 | [sub] clarity, Indefiniteness

An ambiguous but inconsequential claim term does not render the claim as a whole indefinite under § 112, ¶ 2. Here, for example, the claimed use of a “processing system” as part of a method where the point of novelty lies elsewhere was found to be incapable of...

ULTIMATEPOINTER, L.L.C. v. NINTENDO CO LTD (Fed. Cir. 2016) (P) – Functional limitations in an apparatus claim are not indefinite when they recite a capability of an element

by | Mar 1, 2016 | [sub] mixed statutory classes, Indefiniteness

Functional limitations in an apparatus claim do not render the claim indefinite when they merely recite a capability of a given element as opposed to requiring that the function be actually performed to trigger infringement. Here, for example, “a handheld device”...

THE DOW CHEMICAL COMPANY v. NOVA CHEMICALS CORPORATION (Fed. Cir. 2015) (P) – Different measurement options for a claim term may be indefinite when they produce different results

by | Aug 28, 2015 | [sub] breadth, Indefiniteness

A claimed value that can be measured in several ways may be held to be indefinite rather than simply broad when the different measurements produce different results. Here, for example, a slope of strain hardening coefficient claimed within a certain range was found to...

ETHICON ENDO-SURGERY, INC. v. COVIDIEN, INC. (Fed. Cir. 2015) (P) – Measurement techniques for a claimed value need not be specified if understood by one of ordinary skill

by | Aug 7, 2015 | [sub] clarity, Indefiniteness

There is no requirement for the specification to identify a particular measurement technique for ascertaining a claimed value or range of values as long as such an understanding is within the scope of knowledge possessed by one of ordinary skill in the art. Here, for...