Published by the BPLA with the authors’, Nutter McClennen & Fish’s, and IPFrontline’s permission.

This article appeared on Nutter’s IP Law Bulletin blog on
March 14, 2016
.

This article appeared on IPFrontline on
March 29, 2016
.
In the lower court proceedings, the U.S. District Court for the Western District of Washington granted summary judgment of invalidity based on indefiniteness under
35 U.S.C. §112.
In particular, the district court held that the claim limitation “a handheld device including: an image sensor, said image sensor generating data . . .” rendered the claim indefinite, as it was not clear whether the claim was infringed when the apparatus was created, or when the apparatus was put to the specified use. In other words, the district court found the claim to run afoul of
IPXL Holdings v. Amazon (Fed. Cir. 2005)
, in which the Federal Circuit held that “a single claim covering both an apparatus and a method of use of that apparatus” fails to meet the requirements of §112. UltimatePointer appealed the district court’s finding of indefiniteness to the Federal Circuit, which reversed. The Federal Circuit explained that, in these types of cases, the key distinction is whether the claim recites a capability of the claimed structure (in which case the claim is not indefinite) or instead recites the activities of a user (in which case the claim is indefinite). The court’s opinion analyzes several of the pertinent cases: In
IPXL Holdings v. Amazon (Fed. Cir. 2005)
, the indefinite claim was a system claim which recited that “the user uses the input means.” Similarly, in
In re Katz (Fed. Cir. 2011)
, the indefinite claim was a system claim which recited that “callers digitally enter data.” Thus, in both of these cases, the invalid claims required some user action. On the other hand, in
MEC v. Texas Instruments (Fed. Cir. 2008)
, a claim directed to a processor that recited “performing a Boolean algebraic evaluation” was not indefinite, because the “performing” recitation was merely a capability of the processor, not an activity performed by a user. Because UltimatePointer’s claim only indicates that the claimed structure has a particular capability (i.e., that the image sensor can generate data), and does not require that any data be actually generated by a user, the court held that the claim is not indefinite. Even though UltimatePointer’s claims ultimately survived an indefiniteness challenge, this case provides an important reminder of the need to take care when drafting claims to avoid reciting user actions in a system or apparatus claim. This case is also a reminder to those challenging or evaluating the validity of a claim that the possibility exists for an indefiniteness position based on impermissible method/device hybrid claiming.
When are Method/Device Hybrid Claims Indefinite?
The Federal Circuit’s recent decision in
UltimatePointer v. Nintendo (Fed. Cir. Mar. 1, 2016)
provides a reminder of the need to use caution when drafting a claim that could be read to cover both a device and a method of use. UltimatePointer is the assignee of
U.S. Patent No. 8,049,729
(“the ‘729 patent”) which is generally directed to a handheld pointing device that can be used to control the cursor on a projected computer screen, thereby improving a presenter’s ability to control the cursor while making a presentation to an audience. UltimatePointer asserted several claims of the ‘729 patent against Nintendo, with Nintendo’s
Wii remote
being the accused product. A key issue in the litigation was whether the asserted claims were invalid for impermissibly reciting both a device and a method in the same claim. Claim 1 of the ‘729 patent, which was considered by the court to be representative of the asserted claims, reads as follows:
1. 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.
Volume 47, Issue 2
NEWSLETTER ARCHIVE
Table of Contents
2016 ? Boston Patent Law Association
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Table of Contents
President's Message by Erik Belt
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Message from the Editor-in-Chief
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Alice: Making Step Two Work
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Grant Submissions and Novelty: A Catch-22 for Startups
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When are Method/Device Hybrid Claims Indefinite?
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Update on the Patent Pro Bono Program of New England and Call For Volunteer Attorneys!
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Saved by the Date? Is Your Pre-AIA Patent Still At Risk for AIA Post Grant Review?
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Index
6th annual Invented Here! Announcement
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BPLA Sponsors the New England Innovation Award Program of Smaller Business Association of New England (SBANE)
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Report on the Giles Rich Moot Court Competition
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BPLA Writing Competition Accepting Entries
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Annual Judges' Dinner
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IP Roundtable with Chief Judge Saris
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Significant changes to the rules related to european trademarks ¡v three things you should know
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What/where/when/why/how do I include this sequence in a sequence listing?
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Members on the move
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Member Companies and Firms are Encouraged to Utilize BPLA’s Career Center
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