When is a claimed device really a claimed device? Claims for many types of tangible items, particularly computer-related inventions, include functional terminology. As the 213 blog has noted in the past, functional claiming must be approached carefully. So when does functional language present a problem? The Federal Circuit addressed this issue in Ultimate Pointer, LLC v. Nintendo Co.
In 2011, Ultimate Pointer sued Nintendo and retailers of the Wii system alleging that the Wii system infringed several claims of the U.S. Patent No. 8,049,729 patent. The ’729 patent describes a handheld pointing device for controlling the cursor on a projected computer screen. Specifically, the pointing device can measure its location and orientation relative to the projected image and use that measurement to determine where on the image to display the cursor.
The district court concluded that claims 1, 3, 5, and 6 of the ’729 patent were invalid under 35 USC 112(2) as indefinite. Claim 1 is representative of the claims and recites (emphasis added):
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.
The district court held the claims were directed to an apparatus (handheld device), but the inclusion of the data generating step was a functional limitation that rendered the claims indefinite as it was unclear whether infringement occurred when an infringing apparatus is assembled, or when the apparatus is used to perform the recited function.
Section 112 requires that the claims particularly point out and distinctly claim the subject matter which the applicant regards as his invention. In Nautilus v. Biosig Instruments, Inc., the Supreme Court interpreted this section to require the patent claims, viewed in light of the specification and prosecution history, to inform those skilled in the art about the scope of the invention with “reasonable certainty.”
The dispositive issue for the claims is whether the “image sensor generating data” limitation describes a handheld device that requires user interaction or a handheld device having an image sensor described with sufficient structure such that it is capable of generating data. In answering the question, the Federal Circuit relied on its prior precedent addressing the issue, specifically Microprocessor Enhancement Corp. v. Texas Instruments Inc., HTC Corp. v. IPCom GmbH & Co., KG, IPXL Holdings, LLC v. Amazon.com, Inc. and In re Katz Interactive Call Processing Patent Litigation.
In MEC, the court held that claims directed to a computer processor that included functional language (“performing a boolean algebraic evaluation,” “enabling” or “disabling,” and the like) was limited to a “processor possessing the recited structure and capable of performing the functions” without user action. In HTC, the court determined that the functional limitations (such as “storing” and “holding”) for a mobile base station for use with a network described the environment in which the network operated rather than indicating a method of use. Therefore, the functional limitations in the claims were divorced from a requirement for user interaction with structure that provided the ability to carry out the recited function.
In contrast, the claims in IPXL recited a system that included input means and required “the user uses the input means,” and the claims in Katz recited a system with an interface for providing automated voice messages where “certain of said individual callers digitally enter data.” In these cases, the functional claim limitations required specific user action associated with the functional claim limitation. In these claims, specific user interaction with the system is positively claimed.
The Federal Circuit reversed the district court’s finding of invalidity. The court 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. As a result, the court concluded the “claims do not reflect an attempt to claim both an apparatus and a method, but instead claim an apparatus with particular capabilities.”
When drafting claims containing functional limitations, it is important that the claims clearly recite sufficient structure for carrying out the claimed functional limitation. Indications that the functional limitations require more than the recited structure (for example, user interaction) provide an opportunity for a court to find the claims invalid as indefinite. This opinion continues the post-Nautilus trend that the Federal Circuit has taken in rejecting challenges to patent claims on indefiniteness grounds.