Skyhook Wireless, Inc. v. GOOGLE, INC.

Filing 48

DECLARATION of Susan Baker Manning in Support of Google Inc.'s Motion for Summary Judgement of Indefiniteness And, In the Alternative, Opening Claim Construction Brief by GOOGLE, INC.. (Attachments: # 1 Exhibit T, # 2 Exhibit U, # 3 Exhibit V, # 4 Exhibit W, # 5 Exhibit X, # 6 Exhibit Y, # 7 Exhibit Z, # 8 Exhibit AA, # 9 Exhibit BB)(Manning, Susan)

EXHIBIT X

A

BNA’s

PATENT, TRADEMARK
& COPYRIGHT !
JOURNAL
Reproduced with permission from BNA’s Patent,
Trademark & Copyright Journal, 77 PTCJ 576,
3/27/09, 03/27/2009. Copyright ஽ 2009 by The Bureau
of National Affairs, Inc. (800-372-1033) http://
www.bna.com

PAT E N T S

Federal district court patent invalidations based on indefiniteness have risen dramatically
since the Federal Circuit’s 2005 ruling in Datamize. The appellate court opened the door to
even more indefiniteness invalidations in 2008 by issuing a spate of decisions critical of
functional claim language, and the Patent and Trademark Office followed suit by ratcheting
up its own standard for complying with the definiteness requirement. The author traces this
‘‘tectonic shift’’ in indefiniteness jurisprudence since his last report on the topic in this journal over a year ago.

Indefiniteness Invalidations Continue to Rise Sharply in 2008
BY DAVID A. KELLY

Introduction
he second paragraph of 35 U.S.C. § 112 requires
that a patent specification conclude with one or
more claims that particularly point out and distinctly claim the subject matter of the patent. For years,
however, the ‘‘definiteness’’ requirement, as it is
known, was largely pro forma, and rarely were patents
invalidated for failing to comply with it.
But that all changed in August 2005, when the Federal Circuit enunciated a new, more stringent standard

T

David Kelly is patent lawyer with Hunton &
Williams, Atlanta.

COPYRIGHT ஽ 2009 BY THE BUREAU OF NATIONAL AFFAIRS, INC.

for satisfying the requirement. In Datamize LLC v.
Plumtree Software Inc., 417 F.3d 1342, 75 USPQ2d
1801 (Fed. Cir. 2005) (70 PTCJ 437, 8/12/05), the court
held that patent claims must be supported by a ‘‘workable objective standard’’ or an ‘‘objective anchor’’ in the
specification. As I reported last year, this decision resulted in a spike of patent invalidations at the district
court level (75 PTCJ 456, 2/29/08). Indefiniteness invalidations rose nearly 250 percent in the 30 months following Datamize compared to the 30 months preceding
it.
This article surveys the rate of district court indefiniteness invalidations over the past 42 months and concludes that, far from leveling off, the rate of such invalidations continued to rise in 2008: up 350 percent compared to the preceding 42 months. The article suggests
that the increased rate can be explained in part by

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2
prominent decisions issued in 2008 by both the Federal
Circuit and the Patent and Trademark Office.
It began in January 2008, when the Federal Circuit invalidated a patent for ‘‘fragile gel drilling fluids.’’ In
Halliburton Energy Services Inc. v. M-I LLC, 514 F.3d
1244, 85 USPQ2d 1654 (Fed. Cir. 2008) (75 PTCJ 319,
2/1/08), the court rejected Halliburton’s proposed construction of the claims as indefinite because it would
lead to differing results (some infringing and some not)
based on differing sets of circumstances. The court also
admonished patentees from claiming inventions functionally (i.e., by what the invention does, rather than
what it is), suggesting that courts would no longer resolve ambiguities in functional claim language in the
patentee’s favor.
Then, in a trio of software patent cases—Aristocrat
Technologies Australia Pty. Ltd. v. International Game
Technology Inc., 543 F.3d 657, 88 USPQ2d 1458 (Fed
Cir. 2008)(76 PTCJ 731, 9/26/08), Finisar Corp. v. DirectTV Group, 523 F.3d 1323, 86 USPQ2d 1609 (Fed.
Cir. 2008) (75 PTCJ 677, 4/25/08), and Net MoneyIn Inc.
v. Verisign Inc., 545 F.3d 1359, 88 USPQ2d 1751 (Fed.
Cir. 2008)—the Federal Circuit invalidated computerimplemented means-plus-function claims for indefiniteness. In each case the court concluded that the claims
were indefinite because the specifications failed to disclose enough corresponding structure. The court held
that the price patentees must pay for using means-plusfunction language is to disclose the software or algorithm for performing the claimed function.
In the wake of these decisions, on Sept. 2, 2008, the
PTO’s deputy commissioner of patent examination
policy sought to ‘‘clarify’’ the PTO’s policy on indefiniteness rejections. The deputy commissioner explained that an indefiniteness rejection is appropriate
where a claim’s broadest reasonable interpretation results in more than one reasonable construction.
This new policy was cemented on Nov. 19, 2008,
when, in a rare precedential decision, the Board of
Patent Appeals & Interferences in Ex Parte Miyazaki,
89 USPQ2d 1207 (B.P.A.I. 2008), held that claims amenable to two or more plausible constructions ought to
be rejected as indefinite. Noting that this standard was
stricter even than that applied by the courts, the board
justified the tougher standard because, during prosecution, the patentee has an opportunity and a duty to
amend the claims to more clearly define the metes and
bounds of the invention.
What was once a rarely invoked means for narrowing
or invalidating patent claims has, in the course of the
past few years, become both the courts’ and the PTO’s
weapon of choice in the battle to guard the public
against patents of ambiguous or vague scope.

I. 35 U.S.C. § 112, Second Paragraph
35 U.S.C. § 112 specifies a number of formal requirements for a patent’s specification, including a requirement that each patent include one or more claims. Paragraph 2 of that section provides that for a patent claim
to be valid, it must be definite: ‘‘The specification shall
conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
applicant regards as his invention.’’ The statute requires definiteness to encourage invention; vague
3-27-09

claims would deter inventors by confronting them with
an undue risk of infringement.1
The standard for indefiniteness is whether ‘‘one
skilled in the art would understand the bounds of the
claim when read in light of the specification.’’2 A determination that a patent claim is invalid for failure to
meet the definiteness requirement is a conclusion ‘‘that
is drawn from the court’s performance of its duty as the
construer of patent claims [and] therefore, like claim
construction, is a question of law.’’3 Absolute clarity is
not required; rather, the claims need only ‘‘be amenable
to construction, however difficult that task may be.’’4 A
claim is indefinite where it is ‘‘insolubly ambiguous,
and no narrowing construction can properly be
adopted.’’5
In certain fields of invention, particularly softwarerelated inventions, patentees may generically define a
structure for performing a particular function through
the use of a ‘‘means-plus-function’’ limitation. In order
for these claims to be definite, the specification must
disclose sufficient structure corresponding to the
claimed function.6 To qualify as sufficient structure, the
disclosed structure must correspond to the recited function.7 A disclosed structure ‘‘corresponds’’ only if the
specification or prosecution history clearly links or associates it to the recited function.8 While the corresponding structure need not include all necessary elements to enable the claimed invention, it must include
all structure that actually performs the recited function.9

II. Datamize Holds That Claim Terms, to Be
Definite, Must Be Objectively Anchored in ihe
Specification
In Datamize, the claim at issue recited ‘‘an electronic
kiosk system for displaying information’’ in a ‘‘uniform
and aesthetically pleasing’’ manner.10. The district
court concluded that the term ‘‘aesthetically pleasing’’
11
was ‘‘hopelessly indefinite.’’ The Federal Circuit affirmed. In so doing, however, the appellate court went
further than it ever had before in emphasizing the need
for objectivity in determining compliance with 35
U.S.C. § 112(2):
1
See United Carbon Co. v. Binney & Smith Co., 317 U.S.
228, 236 (1942) (‘‘statutory requirement of particularity and
distinctness in claims is met only when [the claims] clearly distinguish what is claimed from what went before in the art and
clearly circumscribe what is foreclosed from future enterprise’’).
2
Exxon Research and Engineering Co. v. United States,
265 F.3d 1371, 1375, 60 USPQ2d 1272 (Fed. Cir. 2001)(62 PTCJ
498, 9/28/01).
3
Bancorp Services LLC v. Hartford Life Insurance Co., 359
F.3d 1367, 69 USPQ2d 1996 (Fed. Cir. 2004) (67 PTCJ 427,
3/12/04).
4
Exxon, 265 F.3d at 1375.
5
Id.
6
Intellectual Property Development, Inc. v. UA-Columbia
Cablevision of Westchester Inc., 336 F.3d 1308, 1319, 67
USPQ2d 1385 (Fed. Cir. 2003)(66 PTCJ 389, 7/25/03).
7
Default Proof Credit Card Systems Inc. v. Home Depot
U.S.A. Inc., 412 F.3d 1291, 1298, 75 USPQ2d 1116 (Fed. Cir.
2005)(70 PTCJ 239, 6/24/05).
8
Id.
9
Id.
10
Datamize, 417 F.3d at 1344-45
11
Id. at 1345-46.

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[H]ere Datamize has offered no objective definition
identifying a standard for determining when an
interface screen is ‘‘aesthetically pleasing.’’ In the
absence of a workable objective standard, ‘‘aesthetically pleasing’’ does not just include a subjective
element, it is completely dependent on a person’s
subjective opinion. . . . Some objective standard
must be provided in order to allow the public to
determine the scope of the claimed invention. . . .
While beauty is in the eye of the beholder, a claim
term, to be definite, requires an objective anchor.12
In this passage the court repeatedly emphasizes objectivity: ‘‘objective definition,’’ ‘‘workable objective
standard,’’ ‘‘objective standard,’’ and ‘‘objective anchor.’’13 The court’s reliance on objectivity as the
benchmark for definiteness is significant because it represents a subtly, yet fundamental, deviation from precedent. Earlier cases had held that a claim was indefinite
‘‘only if reasonable efforts at claim construction prove
futile’’ or if the claim was ‘‘insolubly ambiguous.’’14 But
Datamize held—for the first time—that patent claims
need to be more than just ‘‘amenable to construction’’;
they must also be objectively anchored in the specification.

III. Halliburton Suggests That Functional Claims
Are Inherently Ambiguous, and Advises Patentees
to Cure Any Ambiguities During Prosecution
In Halliburton, the claim at issue related to a drilling
mud system comprising ‘‘fragile gel drilling fluids.’’15
Relying on Datamize, the district court held that the
term ‘‘fragile gel’’ was indefinite because ‘‘[n]either the
specification nor any other evidence provides an objective standard for determining the scope of these amorphous terms.’’16 In January 2008, the Federal Circuit affirmed, holding that the specification’s failure to objectively define ‘‘fragile gel’’ or to distinguish the
‘‘fragileness’’ of the claimed invention from the prior art
was fatal.17 It was irrelevant that Halliburton could articulate a definition supported by the specification:
‘‘Even if a claim term’s definition can be reduced to
words, the claim is still indefinite if a person of ordinary
12

Id. at 1350 (emphasis added).
Indeed, the court’s stress on an objective standard persists throughout the opinion. See, e.g., id. at 1352 (‘‘In general,
neither these statements nor any others in the written description set forth an objective way to determine whether an interface screen is ‘aesthetically pleasing.’); id. at 1353 (‘‘By arguing that ‘aesthetically pleasing’ does not depend on any standard of aesthetics other than a purely subjective standard held
by any person who steps into the role of the system creator, the
prosecuting attorney would eliminate any objective meaning
for the phrase ‘aesthetically pleasing.’ ’’); id. at 1356 (‘‘Neither
would claim 1 be indefinite if an ‘aesthetically pleasing’ look
and feel for an interface screen was objectively verifiable.’’); id.
(‘‘The ‘137 patent, however, fails to provide any objective way
to determine whether the look and feel of an interface screen
is ‘aesthetically pleasing.’ ’’)
14
See, e.g., Exxon Research and Engineering Co. v. United
States 265 F.3d 1371, 1375 (Fed. Cir. 2001); Novo Industries,
LP v. Micro Molds Corp., 350 F.3d 1348, 1353 (Fed. Cir. 2003).
15
Halliburton at 514 F.3d 1244.
16
Halliburton Energy Services Inc. v. M-I LLC, 456
F. Supp. 2d 811, 817-18 (E.D.Tex. Oct. 18, 2006) (citing Datamize, 417 F.3d at 1350-51).
17
Id. at 1252-53.
13

PATENT, TRADEMARK & COPYRIGHT JOURNAL

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skill in the art cannot translate the definition into meaningfully precise claim scope.’’18
The court also took issue with that part of Halliburton’s proposed construction that would cure the ambiguity in the claim by giving it the broadest possible construction. According to the court, this ‘‘would undermine the notice function of the claims because it would
allow Halliburton to benefit from the ambiguity, rather
than requiring Halliburton to give proper notice of the
scope of its claims to competitors.’’19 The court likened
the facts before it to those in Geneva Pharmaceuticals
Inc. v. GlaxoSmithKline PLC,20 where it rejected a patentee’s proposed construction for ‘‘synergistically effective amount’’ because it would simultaneously infringe
or not infringe depending on the particular substrate
chosen. As in that case, infringement under Halliburton’s proposed construction would also depend on a variety of conditions, such as formation geology, wellbore
size, depth and angle.21 According to the court, ‘‘[w]hen
a proposed construction requires that an artisan make
a separate infringement determination for every set of
circumstances in which the composition may be used,
and when such determinations are likely to result in differing outcomes (sometimes infringing and sometimes
not), that construction is likely to be indefinite.’’22
The court did not end its analysis there. It also addressed the issue of functional claiming, i.e., defining
something ‘‘by what it does rather than what it is,’’ and
cautioned that such claim limitations are inherently ambiguous.23 The court counseled patent applicants to resolve issues of ambiguity inherent in functional limitations during prosecution rather than in litigation: ‘‘We
note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly
desirable that patent examiners demand that applicants
do so in appropriate circumstances so that the patent
can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.’’24 If
these ambiguities are not cured during prosecution, the
court’s message seemed clear: they will not be resolved
in the patentee’s favor during litigation.

IV. Aristocrat, Finisar, and Net MoneyIn Hold
That Means-Plus-Function Claims in Software
Patents Must Be Supported by Software or an
Algorithm
In Aristocrat Technologies, the claims at issue related
to an electronic gaming machine that purportedly increases player interest by providing players with
greater control over the definition of winning opportunities.25 The machine allows the player to define the
winning opportunities based on symbols displayed on a
video screen and controlled by a ‘‘game control
means.’’ The district court found the claims indefinite
because the patent specification lacked ‘‘any specific algorithm’’ or any ‘‘step-by-step process for performing
18

Id. at 1251.
Id. at 1254.
349 F.3d 1373 (Fed. Cir. 2003).
21
Id. at 1254-55.
22
Id. at 1255.
23
Id. (internal quotations omitted).
24
Id.
25
Aristocrat Technologies Australia Pty. Ltd. v. International Game Technology, 521 F.3d 1328, 86 USPQ2d 1235
(Fed. Cir. 2008).
19
20

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4
the claimed functions’’ of controlling the machine’s
video screen.26
The Federal Circuit affirmed. The court began by reiterating that, in cases involving a computerimplemented invention in which the inventor has invoked means-plus-function claiming, the structure disclosed in the specification must be more than simply a
general purpose computer or microprocessor.27 While
the patent specification need not disclose source code
or a highly detailed description of the algorithm, at the
very least it must describe an algorithm that transforms
the general purpose microprocessor to a ‘‘special purpose computer programmed to perform the disclosed
algorithm.’’28 The court explained that the price that
Aristocrat must pay for using means-plus-function limitations is to disclose the software or algorithm for performing the claimed function, not simply a general purpose computer.29
For a patentee to claim a means for performing a
particular function and then to disclose only a
general purpose computer as the structure designed to perform that function amounts to pure
functional claiming. Because general purpose
computers can be programmed to perform very
different tasks in very different ways, simply disclosing a computer as the structure designated to
perform a particular function does not limit the
scope of the claim to ‘‘the corresponding structure, material, or acts’’ that perform the function,
as required by section 112 paragraph 6.30
Having failed to disclose the software or algorithm
for performing the claimed ‘‘controlling means,’’ Aristocrat did not satisfy the requirements of 35 U.S.C. § 112,
¶ 6. Moreover, Aristocrat’s argument that the disclosure was enabling was irrelevant since ‘‘the pertinent
question’’ is not whether the specification enables a
person skilled in the art to make and use the invention,
but rather whether the patent discloses structure used
to perform the claimed function.31 In this case, since
Aristocrat had failed to disclose any algorithm at all, a
person of ordinary skill in the art would not have understood the disclosure to encompass such an algorithm32
Accordingly, the means-plus-function limitations of the
claims lacked sufficient disclosure of structure under 35
U.S.C. § 112, ¶ 6, and were therefore indefinite.33
Following close on the heels of Aristocrat, the Federal Circuit in Finisar Corporation v. DirectTV Group, 34
invalidated another computer-implemented meansplus-function claim for indefiniteness. The patent at issue in Finisar claimed information transmission systems that provides subscribers access to video and audio programs through high-speed satellite or cable
links. The claims recited the means-plus-function limitation ‘‘database editing means,’’ which the specification simply indicated could be performed by ‘‘soft-

ware.’’35 Finding that Finisar’s specification failed to
provide an algorithm or description of structure corresponding to the claimed ‘‘database editing’’ function,
the district court ruled that the claims were indefinite.36
The Federal Circuit affirmed. It held that for
computer-implemented means-plus-function claims
where the disclosed structure is a computer programmed to implement an algorithm, ‘‘the patent must
disclose, at least to the satisfaction of one of ordinary
skill in the art, enough of an algorithm to provide the
necessary structure under § 112, ¶ 6.’’37 That algorithm
may be expressed ‘‘as a mathematical formula, in
prose, or as a flow chart, or in any other manner that
provides sufficient structure’’ so long as it is expressed
in an understandable terms.38 But, citing to Aristocrat,
the court explained that merely reciting the word ‘‘software’’ without providing the requisite detail about the
means to accomplish the claimed function is not
enough.39 The court concluded that, ‘‘[w]ithout any corresponding structure, one of skill simply cannot perceive the bounds of the invention,’’ and thus held the
claims to be fatally indefinite.40
In Net MoneyIn, the claim at issue recited a financial
transaction system comprising a ‘‘means for generating
an authorization indicia in response to queries.’’41 The
district court concluded that the claim was indefinite
because the specification failed to disclose any corresponding structure to perform the claimed ‘‘generating’’ function.42 The Federal Circuit affirmed. Citing
Aristocrat, the court held that for computerimplemented inventions, the specification must disclose
more than simply a general purpose computer: ‘‘[A]
means-plus-function claim element for which the only
disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm
for performing the claimed function.’’43 In this case, the
specification only disclosed a ‘‘bank computer,’’ which
the court held was insufficient structure to support a
general purpose computer that ‘‘generates an authorization indicia.’’44

V. The PTO Rules That the Standard for
Complying With the Definiteness Requirement Is
Higher During Prosecution Than in Litigation
In September 2008, ‘‘[i]n light of recent decisions
rendered by the Federal Circuit’’—namely Halliburton
and the Aristocrat line of cases—the PTO issued dual
memoranda ‘‘to remind the examining corps of the appropriate use of indefiniteness rejections.’’ The first
memo addressed indefiniteness rejections in general.
Citing Halliburton, the PTO explained that ‘‘providing a
definition of a claim term in the written description
35

Id. at 1340.
Id.
Id. (citing WMS Gaming Inc. v. International Game Technology, 184 F.3d 1339, 1349 (Fed. Cir. 1999)).
38
Id. (internal citations omitted).
39
Id. at 1340-41 (citing Aristocrat Technologies Australia
Pty v. International Game Technology, 521 F.3d 1328 (Fed.
Cir. 2008)).
40
Id. at 1341.
41
Net MoneyIn Inc. v. Verisign Inc., 545 F.3d 1359 (Fed.
Cir. 2008).
42
Id. at 1362.
43
Id. at 1367.
44
Id.
36
37

26

Id. at 1331-32.
Id. at 1333 (citing WMS Gaming Inc. v. International
Game Technology, 184 F.3d 1339, 51 USPQ2d 1385 (Fed. Cir.
1999) (58 PTCJ 356, 7/22/99)).
28
Id. at 1338.
29
Id. at 1333-1337.
30
Id. at 1333.
31
Id. at 1336.
32
Id. at 1337.
33
Id. at 1338.
34
523 F.3d 1323 (Fed. Cir. 2008).
27

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5
does not preclude a finding of indefiniteness of the
claim term.’’ If an examiner concludes that the definition itself ‘‘is not clear and precise and one of ordinary
skill in the art would consider the term indefinite (e.g.,
the definition’s broadest reasonable interpretation results in more than one meaning and/or interpretation),’’
then an indefiniteness rejection is appropriate.
The second memo addressed indefiniteness rejections for computer-implemented means-plus function
claim limitations. Citing Aristocrat and Finisar, the PTO
explained that for such claims, the corresponding structure must include the algorithm as well as the general
purpose computer or microprocessor. ‘‘The written description of the specification must at least disclose the
algorithm that transforms the general purpose microprocessor to a special purpose computer programmed
to perform the disclosed algorithm that performs the
claimed function.’’ The PTO added that the algorithm
may be expressed ‘‘in any understandable terms including as a mathematical formula, in prose, in a flow chart,
or in any other manner that provides sufficient structure.’’
Together, these memoranda signaled the PTO’s intention to pay closer scrutiny to functional and ambiguous claim language for compliance with the definiteness requirement. This policy was cemented in November 2008, when the Board of Patent Appeals and
Interferences confirmed that a stricter standard of definiteness applied during prosecution than in litigation.
In Ex Parte Miyazaki, the claim at issue related to a
large printer comprising a ‘‘paper feeding unit being located at a height that enables a user, who is approximately 170 cm tall, standing in front of the printer to execute the paper feeding process.’’45 The examiner rejected the claim as indefinite.46
In a rare precedential opinion, the board affirmed. It
began by holding that the standard for definiteness during prosecution is higher than in litigation:
‘‘[W]e employ a lower threshold of ambiguity
when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing
courts. In particular, rather than requiring that the
claims are insolubly ambiguous, we hold that if a
claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring
the applicant to more precisely define the metes
and bounds of the claimed invention by holding
the claim unpatentable . . . as indefinite.47
45

Ex Parte Miyazaki, Appeal No. 2007-3300 (B.P.A.I. 2008).
Id. at 4-5.
47
Id. at 11-12.
46

Citing Halliburton, the board held that thePTO is justified in using a lower threshold showing of ambiguity to
support a finding of indefiniteness ‘‘because the patentee has an opportunity and a duty to amend the claims
during prosecution to more clearly and precisely put
the public on notice of the scope of the patent’’ and to
resolve any ambiguities.48
Turning to the claim at issue, the board held that it
was indefinite because neither it nor the specification
specified the positional relationship between the user
and the printer: ‘‘An infinite number of combinations of
printer and user positions could be envisioned such that
the above-recited language of claim 1 does not, in fact,
impose a structural limitation on the height of the paper
feeding unit of the claimed printer. . . . The Appellant’s
Specification also does not clearly impose such a positional relationship between the user and the printer to
the language of claim 1.’’49

VI. In Wake of Federal Circuit and PTO Decisions,
District Court Indefiniteness Invalidations
Continue to Rise Sharply
As reported last year, the number of indefiniteness
invalidations has risen sharply since August 2005, when
Datamize was handed down.50 The number of district
court decisions invalidating patents for indefiniteness
was 250 percent higher in the 30 months after Datamize
than in the preceding 30 months.
Since those findings were published, the Federal Circuit has issued Finisar, Aristrocrat, and Net MoneyIn,
which invalidated means-plus-function claims in software patents, and the PTO has issued Ex Parte
Miyazaki, which tightened the standard for meeting the
definiteness requirement during prosecution. Together
with Datamize and Halliburton, these decisions have
given real teeth to the definiteness requirement, which
for years was largely toothless. As the tables below
show, in the 40 months following Datamize there were
42 reported district court decisions invalidating claims
for indefiniteness, or roughly one a month. This represents a 350 percent increase in indefiniteness invalidations compared to the same period of time prior to Datamize, where there were only 12 invalidations.
The tables below provide the name of the case,
whether the invalidated claim term was a means-plusfunction claim term or not, the limitation(s) invalidated,
and the general technology class at issue.
48

Id. at 12-13.
Id. at 14.
50
David A. Kelly, ‘‘In the Wake of Datamize and Halliburton: The Recent Spate of Patent Invalidations for Indefiniteness and the Implications for Patent Holders’’ (75 PTCJ 456,
2/29/08).
49

Pre-Datamize (Jan. 2002 - Aug. 2005)
MPF/NonCase Name
MPF
1. Bancorp Services L.L.C. v. Hartford Non-MPF
Life Insurance Co., 2002 WL
32727071 (E.D.Mo. Feb. 13, 2002),
rev’d by Bancorp Services L.L.C. v.
Hartford Life Insurance Co., 359 F.3d
1367 (Fed. Cir. 2004)
PATENT, TRADEMARK & COPYRIGHT JOURNAL

Limitation Held Indefinite
‘‘surrender value protected investment
credits’’

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General Class of
Technology
Electrical/Software

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6

Pre-Datamize (Jan. 2002 - Aug. 2005) − Continued
Case Name
2. Omega Engineering Inc. v. ColeParmer Instrument Co., 198
F. Supp.2d 152 (D.Conn. Mar. 15,
2002)
3. ASM America Inc. v. Genus Inc.,
260 F. Supp.2d 827 (N.D.Cal. Nov.
14, 2002)
4. Competitive Technologies v. Fujitsu
Ltd., 286 F. Supp.2d 1161 (N.D.Cal.
Aug. 8, 2003)
5. Freeman v. Gerber Products
Co.,284 F. Supp.2d 1290 (D.Kan.
Sept. 30, 2003)
6. Marley Mouldings Ltd. v. Mikron
Industries Inc., No. 02-C-2855
(N.D.Ill. May 25, 2004), rev’d by
Marley Mouldings Ltd. v. Mikron
Industries, 417 F.3d 1356 (Fed. Cir.
Aug 8, 2005)
7. Harrah’s Entertainment Inc. v.
Station Casinos Inc., 321 F. Supp.2d
1173 (D.Nev. June 3, 2004)
8. Datamize L.L.C. v. Plumtree
Software Inc., No. 3:02-CV-05693
VRW (N.D.Cal. July 9, 2004), aff’d
by DatamizeLLC v. Plumtree Software
Inc., 417 F.3d 1342 (Fed. Cir. 2005)
9. IPXL Holdings L.L.C. v.
Amazon.Com Inc., 333 F. Supp.2d
513 (E.D.Va. Aug. 25, 2004), aff’d
by IPXL Holdings L.L.C. v.
Amazon.com Inc., 430 F.3d 1377
(Fed. Cir. 2005)
10. Default Proof Credit Card System
v. Home Depot U.S.A., 389
F. Supp.2d 1325 (S.D.Fla. Sept. 30,
2004)
11. Fisher-Price Inc. v. Graco
Children’s Products Inc., 2005 WL
408040 (E.D.Pa. Feb. 17, 2005)
12. Globespanvirata Inc. v. Texas
Instrument Inc., 2005 WL 984346
(D.N.J. Apr. 7, 2005)

MPF/NonMPF
Non-MPF

Limitation Held Indefinite
Claims contained ‘‘internally inconsistent’’
limitations

General Class of
Technology
Mechanical

MPF

‘‘Means for reducing autodoping’’

Chemical/Biotech

Non-MPF

Electrical/Software

MPF

Claim containing one limitation directed to
ISA configuration and another limitation
excluding ISA configurations
‘‘attachable means’’ for keeping lid on cup

Non-MPF

‘‘in parts (volume)’’

Chemical/Biotech

Non-MPF

‘‘theoretical win profile’’

Electrical/Software

Non-MPF

‘‘aesthetically pleasing’’

Electrical/Software

Non-MPF

‘‘The system of claim 2 wherein . . . the user Electrical/Software
uses the input means’’

MPF

‘‘means for dispensing’’

Electrical/Software

Non-MPF

‘‘a seat coupled to said swing arm and
having an upper seating surface’’

Mechanical

MPF

‘‘means for measuring the capability of the
Electrical/Software
datalink to efficiently communicate the data
bits’’

Mechanical

Post-Datamize (Aug. 2005-Dec. 2008)
Case Name
1. Gobeli Research Ltd. v. Apple
Computer Inc., 384 F. Supp. 2d
1016 (E.D. Tex. Aug. 26, 2005)
2. Net MoneyIN Inc. v. VeriSign Inc.,
2005 WL 5960650 (D.Ariz. Oct. 19,
2005), aff’d by Net MoneyIN Inc. v.
VeriSign Inc., 545 F.3d 1359, 1365
(Fed. Cir. 2008).

3-27-09

MPF/NonMPF
MPF

MPF

Limitation Held Indefinite
‘‘means for reallocating processing
resources unused by said specific portions
to other specific portions as a function of
task priority’’
‘‘means for generating an authorization
indicia,’’ and ‘‘a financial processing
computer . . . having automatic means
responsive to [the] order for . . . receiving
customer account data . . .’’

COPYRIGHT ஽ 2009 BY THE BUREAU OF NATIONAL AFFAIRS, INC.

General Class of
Technology
Electrical/Software

Electrical/Software

PTCJ

ISSN 0148-7965

7

Post-Datamize (Aug. 2005-Dec. 2008) − Continued
MPF/NonCase Name
MPF
3. Linear Technology Corp. v. Micrel, Non-MPF
2005 WL 5918851 (N.D. Cal. Nov.
10, 2005)
4. Fargo Electronics Inc. v. Iris Ltd., Non-MPF
2005 WL 3241851 (D. Minn. Nov.
30, 2005), aff’d by Fargo Electronics
Inc. v. Iris Ltd., 287 Fed.Appx. 96 (
Fed. Cir. 2008)
5. Touchcom Inc. v. Dresser Inc., 427 MPF
F. Supp.2d 730 (E.D.Tex. Dec. 5,
2005)
6. Acacia Media Technologies Corp. v. Non-MPF
New Destiny Internet Group, 405
F. Supp.2d 1127 (N.D. Cal. Dec. 7,
2005)
7. Finisar Corp. v. DirecTV Group Inc., MPF
416 F. Supp.2d 512 (E.D.Tex. Feb.
17, 2006), aff’d in part and rev’d in
part by Finisar Corp. v. DirecTV Group
Inc., 523 F.3d 1323 (Fed. Cir. 2008)
8. AllVoice Computing PLC v. Nuance MPF
Communications Inc., H-02-4471
(S.D. Tex. Feb. 22, 2006), rev’d by
AllVoice Computing PLC v. Nuance
Communications Inc., 504 F.3d
1236, 1248 (Fed. Cir. 2007).
9. Biomedino v. Waters Technologies MPF
Corp., No. CV05-0042 (W.D. Wash.
Mar. 15, 2006), aff’d by Biomedino
LLC v. Waters Technologies Inc., 490
F.3d 946, 953 (Fed. Cir. 2007).
10. DE Technologies Inc. v. Dell Inc., MPF
428 F. Supp. 2d 512 (W.D. Va. May
10, 2006)
11. E-Watch Inc. v. March Networks Non-MPF
Corp., 2006 WL 2239069 (E.D. Tex.
Aug. 4, 2006)
12. Southwestern Bell Telephone Co. MPF
v. Arthur A. Collins Inc., No. 20071577 (N.D. Tex. Sept. 26, 2006),
aff’d by Southwestern Bell Telephone
Co. v. Arthur A. Collins Inc., 279
Fed.Appx. 989 (Fed. Cir. 2008)
13. Halliburton Energy Services Inc. Non-MPF
v. M-I LLC, 456 F. Supp.2d 811 (E.D.
Tex. Oct. 18, 2006), aff’d by
Halliburton Energy Services Inc. v. M-I
LLC, —- F.3d —-, 2008 WL 216294
(Fed. Cir. 2008)
14. Rackable Systems Inc. v. Super Non-MPF
Micro Computer, Inc., 2006 WL
3065577 (N.D. Cal. Oct. 27, 2006)
15. Maurice Mitchell Innovations L.P. MPF
v. Intel Corp., 2006 WL 3447632
(E.D. Tex. Nov. 22, 2006)
16. Maurice Mitchell Innovations L.P. MPF
v. Intel Corp., No. 2:04-CV-450 (E.D.
Tex. Dec. 11, 2006)

PATENT, TRADEMARK & COPYRIGHT JOURNAL

General Class of
Limitation Held Indefinite
Technology
Reexamination certificate omitting amended Electrical/Software
claims
mistakenly truncated phrase, ‘‘the second
supports other than the’’ in a patent for
ribbon supply rolls

Electrical/Software

‘‘application task means’’ and ‘‘display and
input task means’’

Electrical/Software

‘‘sequence encoder’’

Electrical/Software

‘‘database means . . . for generating . . . and Electrical/Software
for embedding. . .’’

‘‘output means for outputting the recognized Electrical/Software
words into at least any one of the plurality of
different computer-related applications’’

‘‘control means for automatically operating
said valving’’

Chemical/Biotech

‘‘means for running a transaction program so Electrical/Software
as to integrate components including . . .’’
‘‘server’’ and ‘‘said sensor’’

Electrical/Software

‘‘means for measuring’’

Electrical/Software

‘‘fragile gel drilling fluid’’

Chemical/Biotech

‘‘front’’

Mechanical

‘‘first switch means,’’ ‘‘second switch
means,’’ ‘‘means for causing said first and
second switch means to remain in said non
signal-conducting state’’
‘‘means for causing’’

Electrical/Software

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Electrical/Software

BNA

3-27-09

8

Post-Datamize (Aug. 2005-Dec. 2008) − Continued
MPF/NonCase Name
MPF
17. Leggett & Platt, Inc. v. Vutek Inc., Non-MPF
2006 WL 3813677 (E.D. Mo. Dec.
26, 2006)
18. Microprocessor Enhancement
Non-MPF
Corp. v. Texas Instruments Inc., 2007
WL 840362 (C.D. Cal. Feb. 8, 2007)
19. Aristocrat Technologies Australia MPF
Pty Ltd. v. International Gaming
Technology, Civil Action No. 07-1419
(April 20, 2007), aff’d by Aristocrat
Technologies Australia Pty Ltd. v.
International Gaming Technology,521
F.3d 1328 (Fed. Cir. March 28,
2008)
20. Rothschild Trust HoldingsLLC v. Non-MPF
Citrix Systems Inc., 491 F. Supp.2d
1105 (S.D. Fla. June 5, 2007)
21. Howmedica Osteonics Corp. v.
Non-MPF
Zimmer Inc., 2007 WL 1741763 (D.
N.J. June 13, 2007)
22. Hamilton Products Inc. v. O’Neill, Non-MPF
492 F. Supp.2d 1328 (M.D. Fla.
June 15, 2007)
Non-MPF
23. Star Scientific Inc. v. R.J.
Reynolds Tobacco Co., 2007 WL
1890709 (D.Md. June 26, 2007),
rev’d by Star Scientific Inc. v. R.J.
Reynolds Tobacco Co., 537 F.3d
1357 (Fed. Cir. 2008)
24. Graphon Corp. v. Autotrader.com MPF
Inc., 2007 WL 1870622 (E.D. Tex.
June 28, 2007)
25. Praxair Inc. v. ATMI Inc., No.
Non-MPF
03-1158-SLR (D.Del. July 2, 2007),
rev’s by Praxair Inc. v. ATMI Inc., 543
F.3d 1306 (Fed. Cir. 2008)
26. Blackboard Inc. v. Desire2Learn MPF
Inc., 2007 WL 2255227 (E.D. Tex.
Aug. 3, 2007)
27. Cisco Systems Inc. v. Telcordia
Non-MPF
Technologies Inc., 2007 WL
2316272 (E.D. Tex. Aug. 10, 2007)
28. Enzo Biochem Inc. v. Applera
Non-MPF
Corp., 2007 WL 2669025 (D. Conn.
Sept. 06, 2007)
29. starpay.com L.L.C. v. Visa
Non-MPF
International Service Association,
514 F. Supp.2d 883 (N.D. Tex. Sept.
10, 2007)
30. DSW Inc. v. Shoe PavilionInc., No. MPF
2:06-CV-06854-FMC-SHx (C.D.Cal.
Sept. 25, 2007), vacated on other
grounds by DSW Inc. v. Shoe Pavilion
Inc., 537 F.3d 1342 (Fed. Cir. 2008)
31. Romala Stone Inc. v. Home Depot Non-MPF
U.S.A.Inc., 2007 WL 2904110 (N.D.
Ga. Oct. 1, 2007)

3-27-09

Limitation Held Indefinite
‘‘deform, deforming, and deformation’’

General Class of
Technology
Chemical/Biotech

‘‘at least one condition code,’’ followed by
five subsequent references to ‘‘condition
code,’’ each of which has a different
meaning depending on the context
‘‘game control means arranged to control
images displayed on the display means’’

Electrical/Software

‘‘full band broadcast signal’’

Electrical/Software

Arrhenius’ equation term

Chemical/Biotech

Electrical/Software

‘‘greater than approximately’’ and ‘‘less than Mechanical
approximately’’
‘‘anaerobic condition’’

Chemical/Biotech

‘‘means for generating said record with said
information’’.’’

Electrical/Software

‘‘port body’’

Mechanical

‘‘means for assigning a level of access to,’’
and ‘‘means for allowing access to and
control of’’
‘‘within about a reasonable number for
human capacity’’

Electrical/Software

‘‘not interfering substantially’’

Chemical/Biotech

‘‘requesting’’

Electrical/Software

Claims lacked seminal ‘‘Track and Roller’’
limitation

Mechanical

Electrical/Software

‘‘a price affordable to an average consumer’’ Electrical/Software

COPYRIGHT ஽ 2009 BY THE BUREAU OF NATIONAL AFFAIRS, INC.

PTCJ

ISSN 0148-7965

9

Post-Datamize (Aug. 2005-Dec. 2008) − Continued
MPF/NonCase Name
MPF
32. Synthes (USA) v. Smith & Nephew Non-MPF
Inc.,Civil Action No. 03-cv-0084
(E.D. Pa. Feb. 4, 2008)
33. Mytee Products Inc. v. Harris
Non-MPF
Research Inc., 2008 WL 4855029
(S.D.Cal. April 24, 2008)
34. Visto Corp. v. Research in Motion MPF
Ltd., 2008 WL 1930295 (E.D.Tex.
Apr. 30, 2008)
35. Alcatel USA Resources Inc. v.
MPF
Microsoft Corp., 2008 WL 2625852
(E.D.Tex. June 27, 2008)
36. CBT Flint Partners LLC v. Return Non-MPF
Path Inc., 2008 WL 2744751
(N.D.Ga July 11, 2008)
37. Ariba Inc. v. Emptoris Inc., 2008 Non-MPF
WL 3482521 (E.D.Tex. Aug. 7,
2008)
38. Baldwin Graphic Systems Inc. v. Non-MPF
Siebert Inc., 2008 WL 4083145
(N.D.Ill. Aug. 27,2008)
39. Hochstein v. Microsoft Corp.,
MPF
2008 WL 4104332 (E.D.Mich. Sept.
2, 2008)
40. First Years Inc. v. Munchkin Inc., Non-MPF
575 F. Supp.2d 1002 (W.D.Wis.
Sept. 9, 2008)
41. Network Appliance Inc. v. Sun
Non-MPF
Microsystems Inc., 2008 WL
4193049 (N.D.Cal. Sept. 10, 2008)
42. Keithley v. Homestore.com Inc., MPF
2008 WL 4962885 (N.D.Cal. Nov.
19, 2008)

Limitation Held Indefinite
‘‘less than about 2%’’

General Class of
Technology
Chemical/Biotech

‘‘Vertically higher’’

Mechanical

‘‘means for updating’’

Electrical/Software

‘‘recognition means for detection of an
actual property protocol of the
communications protocol’’
‘‘detect analyze’’

Electrical/Software

Claim reciting both apparatus and method
was indefinite

Electrical/Software

‘‘reduced air content cleaning fabric’’

Mechanical

‘‘control means,’’ ‘‘modem means, ‘‘first
port means,’’ and ‘‘voice over data means’’

Electrical/Software

‘‘natural state surface energy’’

Mechanical

‘‘associating the data blocks with one or
more storage blocks across the plurality of
stripes as an association’’
‘‘database demographics updating means’’

Electrical/Software

Electrical/Software

Electrical/Software

The following chart uses six-month time intervals to chart the increase of district court patent invalidations over
the last 7 years. As can be seen, prior to Datamize, no six-month interval had more than 3 indefiniteness invalidations. Since Datamize, no six-month interval has had fewer than 4 indefiniteness rejections. The black line, representing the trend, is angled sharply upward.

Conclusion
Datamize represented a tectonic shift in indefiniteness jurisprudence. District court patent invalidations
for indefiniteness have risen dramatically ever since the
decision, with the rate of invalidation now exceeding
more than one a month. In 2008, the Federal Circuit
fanned the flames by issuing a spate of decisions critical of functional claim language, opening the door to
even more patent invalidations. And the PTO followed
suit by ratcheting up its own standard for complying
with the definiteness requirement, leading inevitably to
more indefiniteness rejections during prosecution.
These cases reflect a new paradigm in indefiniteness
jurisprudence, and patentees would do well to consider
this and to craft appropriate strategies in view of it. In

PATENT, TRADEMARK & COPYRIGHT JOURNAL

ISSN 0148-7965

particular, patent drafters should ensure that the specification provides a meaningful standard for determining the scope and meaning of the claim terms. Moreover, for terms that are explicitly defined in the specification, patentees should ensure that the definition itself
is clear and unambiguous. Patentees should also avoid
claiming their inventions functionally wherever possible. If functional language is necessary, patentees
should be sure to clarify any ambiguity during prosecution. In addition, electrical and software patentees
should, where possible, avoid means-plus-function
claim limitations. And if such limitations are necessary,
patentees should be sure to include in the specification
some software or an algorithm corresponding to the
claimed functions.

BNA

3-27-09

10

8

Datamize

7

Indefinite Invalidations

6
5
4
3
2
1
0
Jan-Jun Jul-Dec Jan-Jun Jul-Dec Jan-Jun Jul-Dec Jan-Jun Jul-Dec Jan-Jun Jul-Dec Jan-Jun Jul-Dec Jan-Jun Jul-Dec
02
02
03
03
04
04
05
05
06
06
07
07
08
08

Date

3-27-09

COPYRIGHT ஽ 2009 BY THE BUREAU OF NATIONAL AFFAIRS, INC.

PTCJ

ISSN 0148-7965