On March 1, 2016, the Court of Appeals for the Federal Circuit issued a decision in UltimatePointer, LLC v. Nintendo Co., No. 2015-1297, 2016 BL 60387 (Fed. Cir. Mar. 01, 2016). One of the issues decided by the court was whether UltimatePointer’s claims, including apparatus and process recitations, are indefinite. The Federal Circuit overturned the district court finding of patent claim indefiniteness.
The U.S. Patent & Trademark Office Manual of Patent Examining Procedure states that a claim may be definite if it includes both structural and functional features. For example, Section 2173.05(f) specifically states that a claim which reads: "The product produced by the method of claim 1," or "[a] method of producing ethanol comprising contacting amylose with the culture of claim 1 under the following conditions . . ." is not indefinite. That Section does state that if the format results in confusion, then a rejection would be proper under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The Court of Appeals has approved such claims where it is clear that the reference in an apparatus claim to a function merely defines the capability of a structure of the apparatus. That situation is contrasted with a claim that requires a user to actually use a structure to accomplish a recited function.
For example, in Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367 (Fed. Cir. 2008), the Court determined that a claim directed to a computer processor including instructions for performing various functions was definite. These functions included "performing a Boolean algebraic evaluation," "producing an enable-write," "enabling" or "disabling," and "determining." The Court found that the claim was "clearly limited to a . . . processor possessing the recited structure and capable of performing the recited functions." The noted claim recitation only indicated a capability of the structure rather than actual use.
Similarly, the Court in HTC Corp. v. IPCom GmbH & Co., 667 F.3d 1270, 101 U.S.P.Q.2d 1518 (Fed. Cir. 2012) decided that a claim drawn to a mobile station for use with a network was definite. The claim included "storing," "holding" and other functional limitations. These recitations were deemed to merely establish those functions as the underlying network environment in which the mobile station operates.
In contrast, if an apparatus claim appears to require use by a user, rather than the mere capability of such use, then the claim may be indefinite. See, e.g., IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). The claim at issue in IPXL Holdings was:
25. The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.
The Court in IPXL Holdings determined this claim to be indefinite, as it was unclear whether infringement occurred when the system was created or when the user used the system.
Likewise, in In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed.Cir. 2011), the Federal Circuit affirmed a district court's conclusion that claims were indefinite because they were directed to two statutory classes. The claims at issue recited “interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digitally enter data.” The Federal Circuit reasoned that the clause calling for callers digitally entering data did not indicate mere functional capability, but was rather directed to user actions.
In UltimatePointer, one of the claims at issue was:
- An apparatus for controlling a feature on a computer generated image, the apparatus comprising:
a handheld device including:
an image sensor, said image sensor generating data related to the distance between a first point and a second point, the first point having a predetermined relation to the computer generated image, and the second point having a predetermined relation to a handheld enclosure; and
a processor coupled to said handheld device to receive said generated data related to the distance between a first point and a second point and programmed to use the distance between the first point and the second point to control the feature on the image.
The District Court (trial court) determined that claim 1 was indefinite, because it was directed to both an apparatus (a "handled device including: an image sensor, said image sensor") and a method for using that apparatus ("generating data").
In overturning the District Court’s determination, the Federal Circuit distinguished the claims at issue from the claims discussed in IPXL Holdings and In re Katz and drew analogies between the claims at issue and those addressed in Microprocessor Enhancement Corp. and HTC Corp.
In UltimatePointer, the Federal Circuit found that “the ‘data generating’ limitations only indicate that the associated structures have this capability (for example, the image sensor and processor in claim 1) and do not require that any data be actually generated by the user.” UltimatePointer at 19. The Court thus concluded that the claims at issue were not indefinite.
To summarize, the Federal Circuit’s decision clarifies the test for determining whether a claim reciting both apparatus and process limitations is indefinite. That is, one must determine whether the claim is directed to both structure and functionality divorced from that structure, or whether the claim recites an apparatus with particular capabilities.