{"id":2676,"date":"2020-02-04T20:17:53","date_gmt":"2020-02-05T01:17:53","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2676"},"modified":"2020-02-08T15:42:07","modified_gmt":"2020-02-08T20:42:07","slug":"federal-circuit-asks-ptab-to-give-it-a-go-and-decide-whether-indefinite-claims-were-otherwise-patentable","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2676","title":{"rendered":"Federal Circuit Asks PTAB to Give it a Go and Decide Whether Indefinite Claims Were otherwise Patentable"},"content":{"rendered":"\n

In Samsung Electronics America, Inc. v. Prisua Engineering Corp<\/a>., 2019-1169, 2019-1260 (February 4, 2020) the Federal Circuit affirmed the PTAB determination that claim 11 of U.S. Patent No. 8,650,591 was invalid for obviosuness, but vacated the PTAB’s decision declining to decide whether claims 1-4 and 8 were patentable because these claims were indefinite.<\/p>\n\n\n\n

The claims of the ‘591 patent are directed to methods and apparatuses for generating a displayable edited video data stream from an original video data stream. The Board determined that claim 1 (and claims 2-4 and 8) claimed both an apparatus and a method, and thus was indefinite under IPXL Holdings. Because the claims were indefinite, the Board declined to determine whether they otherwise defined patentable subject matter. The Board also found the claims indefinite because of the inclusion of \u201cdigital processing unit\u201d which the Board found invoked 112(f), without identifying any corresponding stucture in the claims.<\/p>\n\n\n\n

Samsung appealed arguing that the Board should have declared the claims in valid for indefiniteness. The Federal Circuit agreed with the Board that the Board did not have the authority to invalidate claims on that ground.<\/p>\n\n\n\n

Samsung\u2019s secondary argument was that the Board should have nonetheless assessed the patentability of claims 1 and 4\u20138 under sections 102 or 103. On this point, the Federal Circuit agreed.<\/p>\n\n\n\n

The Federal Circuit noted that on the first ground of indefiniteness — mixed method and apparatus claiming, the indefiniteness problem was one of understanding when infringement occurred, and not necessarily what the claim actually means. Moreover, the Federal Circuit noted that the Board had previously held that IPXL-type indefiniteness does not prevent the Board from addressing patentability.<\/p>\n\n\n\n

Thus the Federal Circuit remanded the case for the Board to attempt to apply 102 and 103 to the claims.<\/p>\n\n\n\n

As to the second ground of indefiniteness, that \u201cdigital processing unit\u201d invoked 112(f) without providing corresponding structure in the claims, the Federal Circuit disagreed. The Federal Circuit said that the question whether the term \u201cdigital processing unit\u201d invokes section 112, paragraph 6, depends on whether persons skilled in the art would understand the claim language to refer to structure, assessed in light of the presumption that flows from the drafter\u2019s choice not to employ the word \u201cmeans. The Federal Circuit said that the Board pointed to no evidence that a person skilled in the relevant art would regard the term \u201cdigital processing unit\u201d as purely functional. In fact, the patent owner argued to the Board, based on testimony from its expert (the inventor), that the digital processing unit recited in the claims is \u201can image processing device that people in the art are generally familiar with.\u201d Moreover, the fact that claim 1 required the \u201cdigital processing unit\u201d to be operably connected to a \u201cdata entry device\u201d supports the structural nature of the term \u201cdigital processing unit,\u201d as used in the claim.<\/p>\n\n\n\n

The Federal Circuit rejected the Board\u2019s conclusion that the term \u201cdigital processing unit,\u201d as used in claim 1, invoked means-plus-function claiming,
and that for that reason claims 1 and 4\u20138 cannot be analyzed for anticipation or obviousness.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Samsung Electronics America, Inc. v. Prisua Engineering Corp., 2019-1169, 2019-1260 (February 4, 2020) the Federal Circuit affirmed the PTAB determination that claim 11 of U.S. Patent No. 8,650,591 was invalid for obviosuness, but vacated the PTAB’s decision declining to … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[57,42,14,26,12],"tags":[],"class_list":["post-2676","post","type-post","status-publish","format-standard","hentry","category-112f","category-anticipation","category-indefiniteness","category-inter-partes-review","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2676","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2676"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2676\/revisions"}],"predecessor-version":[{"id":2677,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2676\/revisions\/2677"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2676"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2676"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2676"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}