Category Archives: Indefiniteness

Graphical Indicator Patent Gets “Definite” Win Under § 112

Authors: Shayda Shahbazi
Editor: Kevin D. Rodkey

In Sonix Technology Co., Ltd. v. Publications International, Ltd., No. 16-1449 (Fed. Cir. Jan. 5, 2017), the Federal Circuit reversed the district court’s decision that the claim term “visually negligible” rendered the claims indefinite.

Sonix brought suit against Publications International, alleging infringement of U.S. Patent No. 7,328,845, which is directed to using a “graphical indicator” to encode information on the surface of an object that can be read using an optical device to output additional information. The asserted claims of the ’845 patent recite that the indicator is “visually negligible.” The district court granted summary judgment, finding the term “visually negligible” indefinite, concluding that it relied on the user’s perception with no objective standard to measure the scope of the term. Continue reading


Specification’s Disparaging Remarks Can Limit Claim Scope, While Functional Language Is Not Indefinite If It Describes System’s Capabilities

Author: Ming Wai Choy
Editor: Kevin D. Rodkey

In UltimatePointer, LLC v. Nintendo Co., Ltd., No. 15-1297 (Fed. Cir. Mar. 1, 2016), the Federal Circuit affirmed the district court’s claim construction and noninfringement findings, but reversed its determination that the asserted claims are indefinite.

UltimatePointer sued Nintendo, alleging infringement of U.S. Patent No. 8,049,729 by Nintendo’s Wii video game system. The district court construed the claim term “handheld device” to require a “direct pointing device” where the cursor shown corresponds to the image on the screen being pointed at. On appeal, the Court affirmed, explaining that “repeated derogatory statements” of indirect pointing devices in the specification indicate that “the criticized technologies were not intended to be within the scope of the claims.” The Court then analyzed the Wii system’s operation and found that, because the pointing correlates to the remote’s position relative to a sensor bar, not the television screen image, the Wii system did not infringe the asserted claims.

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Issue Preclusion Does Not Prevent Defendant NOVA from Relitigating Indefiniteness After Change in Law

Author:  Kevin D. Rodkey
Editor: Jeff T. Watson

In Dow Chemical Co. v. NOVA Chemicals Corp. (Canada), Nos. 14-1431, -1462 (Fed. Cir. Aug. 28, 2015), the Federal Circuit held that NOVA could relitigate during an appeal regarding supplemental damages whether the claims of U.S. Patent Nos. 5,847,053 and 6,111,023 are indefinite, an issue decided in a prior Federal Circuit appeal in 2012, because of a subsequent change in the law of indefiniteness.  The Court explained that, although the doctrines of law of the case and issue preclusion generally prohibit a party from relitigating a previously decided issue, they did not prevent NOVA from relitigating indefiniteness because supplemental damages requires a showing of infringement and “necessarily implicates patent validity.”  The Federal Circuit’s prior determination that the claims were not indefinite relied on case law abrogated by the Supreme Court’s Nautilus decision, which thus provided an exception to the applicability of law of the case and issue preclusion.  Continue reading

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