Plaintiff, Semcon, is a patent assertion entity that acquires patents from third parties and seeks to generate revenue by asserting them against alleged infringers. Among these acquired patents are four U.S. Patents: 7,100,061 (‘061), 7,596,708 (‘708), 8,566,627 (‘627), and 8,806,247 (‘247). These patents are generally directed to technology for managing a computer system’s power consumption by dynamically adjusting the processor’s operating frequency and voltage. Semcon sued Louis Vuitton and TCT Mobile (Defendants) for infringement in the Eastern District of Texas. The Court held three claims (12, 18, and 19) of the ‘627 Patent to be invalid as indefinite.
In the claim construction memorandum, the court reiterated that patent claims must particularly point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. § 112. A claim, when viewed in light of the intrinsic evidence, must “inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). If it does not, the claim fails § 112, and is therefore invalid as indefinite. Whether a claim is indefinite is determined from the perspective of one of ordinary skill in the art as of the time the application for the patent was filed. In total, the court construed twelve terms in its 64-page ruling. However, only one term, found in three dependent claims of the ‘627 patent, was determined to be indefinite.
The issue in dispute was whether the meaning of the term “said change in operating conditions” was reasonably certain in the context of the claims and description of the invention. The disagreement here was over antecedent basis. The chain of dependency for the claim including the term does not recite the words “a change in operating conditions” but does recite “a change in frequency of said first clock signal,” “adjust said first clock signal by a first value,” “adjust said clock signal by a second value,” and “change said first value to a third value and to change said second value to a fourth value.” Semcon pointed to these terms as providing an antecedent basis. The court disagreed. “It is not clear whether the change in operating conditions refers to the generic change in frequency of the first clock signal in the PLL circuitry, the first-value adjustment to the first clock signal, the second-value adjustment to the second clock signal, the change in frequency to provide the processor frequency (due to the first-value adjustment), or the change in frequency to provide the component frequency (due to the second-value adjustment). Perhaps the change in operating conditions refers to all of these or some subset of these?” Thus, the term was indefinite and the claims were found to be invalid.
This issue is a common occurrence and it bears repeating —A claim is indefinite when it contains a term whose meaning is unclear. The lack of clarity could arise when there is a lack of antecedent basis. In other words, the definite articles “the,” “said,” and “such cannot be used unless the following noun has already been introduced in the claim. Alternatively, it is best practice to ensure that every term in the claims is supported verbatim in the description. The overarching problem could be the antiquated formal language traditionally used in claim drafting. Perhaps it is best to speak plainly with language a little closer to how normal human beings talk.
Ricardo earned his JD from Tulane University Law School in 2019. His background in Microbiology and Virology has guided his interest into the field of Intellectual Property.