Claim Limitation Reciting Unspecified ‘Requirements” Indefinite Under § 112(b)

Thursday, September 13, 2018

Intellectual Ventures I LLC v. T-Mobile, Inc., Case No. 2017-2434 (Fed. Cir. Sept. 4, 2018).

The U.S. Court of Appeals for the Federal Circuit affirmed a district court ruling that a claim in Intellectual Ventures I LLC’s patent covering an “application-aware resource allocator” for allocating bandwidth resources to transmit information from software applications over a packet-switched network was invalid as indefinite under 35 U.S.C. § 112(b).

Intellectual Ventures asserted its U.S. Patent No. 6,640,248 against T-Mobile, Inc. in the U.S. District Court for the District of Delaware. T-Mobile contended, among other things, that claim 20 of the ‘248 patent was invalid as indefinite. The patent specification explained that “Quality of Service” (or “QoS”) requirements differ between software applications. For example, some applications may place a priority on error minimization, while other applications may place a priority on communication speed. Claim 20 of the ‘248 patent states in part:

allocating means for allocating resources to said [Internet Protocol] flow, responsive to said identifying means, so as to optimize end user application IP QoS requirements of said software application, wherein said resource allocating means allocates resources in a packet-centric manner that is not circuit-centric and does not use asynchronous transfer mode (ATM).

‘248 Patent, claim 20 (emphasis added).

The district court construed the asserted claims of the ‘248 patent, but ruled that claim 20 was indefinite. Based on the claim construction and indefiniteness ruling, the district court granted summary judgment in favor of T-Mobile.

On appeal, the Federal Circuit reversed summary judgment of noninfringement based on claim construction issues, but affirmed the district court’s ruling that claim 20 was invalid as indefinite. The appeals court noted that a claim is definite under § 112(b) if it “inform[s] those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). When a “term of degree” is recited in a claim, it is definite “where it provide[s] enough certainty to one of skill in the art when read in the context of the invention,” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). But “a term of degree that is ‘purely subjective’ and depends ‘on the unpredictable vagaries of any one person’s opinion’ is indefinite[.]” Slip op at 15, quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–51 (Fed. Cir. 2005). The Federal Circuit held that the term “QoS requirements” in claim 20 was indefinite because the specification failed to provide sufficient guidance about how that limitation is applied:

By the ’248 patent’s own terms, “optimiz[ing] . . . QoS” is a “term of degree” that, like the “aesthetically pleasing” limitation in Datamize, is “purely subjective” and depends “on the unpredictable vagaries of any one person’s opinion.” 417 F.3d at 1350–51. As in Datamize, merely understanding that “optimiz[ing] . . . QoS” relates to the end-user experience “fails to provide one of ordinary skill in the art with any way to determine whether” QoS has been “optimiz[ed].” We see no error in the district court’s conclusion that this function is indefinite or that because the function is indefinite, there was no need to evaluate structure.

Slip op. at 15-16.