Federal Circuit Finds Claim Language Not Indefinite in BASF v. Johnson Matthey
The Federal Circuit reversed a Delaware courts finding on indefiniteness in BASF v. Johnson Matthey. Johnson had argued that "effective to catalyze" language in the claims was fucntional without “objective boundaries on (1) what amount of effectiveness is required, or (2) how to measure the effectiveness.” BASF countered that it was clear that “'composition . . . effective to catalyze' in the context of the ’185 patent to mean a 'composition capable of catalyzing” the reaction in question 'in a catalyst system for treating engine exhaust gas.'”
DDR Holdings LLC v. Hotels.com
I am belatedly adding the DDR Holdings LLC v. Hotels.com decision, since I regularly find it useful in showing software patentability. In DDR, the court held that matching a look and feel was not abstrct.
Federal Circuit Invalidates Patent in Intellectual Ventures v. Erie
The Federal Circuit agreed that the claims in the patent in Intellectual Ventures I LLC v. Erie Indemnity Co. were invalid under Alice as an abstract idea. Intellectual Ventures (IV) argued that the claims were directed to "...specific search architecture that improves how computer databases function..." by using XML tags to generate an index, and that this was similar to the improvement of function in Enfish.
The court noted "The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in the technology of computer databases, as in Enfish. Instead, the claims simply call for XML-specific tags in the index without any further detail." The court further concluded "The focus of the claims, therefore, remains at a high level on searching a database using an index. The inclusion of XML tags as the chosen index building block, with little more, does not change that conclusion."
The decision highlights the importance of including technical detail in patent claims. A representative claim is listed below. Read the decision here.
1. A method for creating a database and an index to search the database, comprising the steps of:
creating the index by defining a plurality of XML tags including domain tags and category tags;
creating a first metafile that corresponds to a first domain tag; and
creating the database by providing a plurality of records, each record having an XML index component.
Federal Circuit Finds Claims Not Abstract in Visual Memory v. NVIDIA
The Federal Circuit found that the patent in Visual Memory LLC v. NVIDIA Corporation was patentable subject matter, reversing the district court invalidation under Alice. The court found that although brief, computer improvements were claimed.
Federal Circuit Weighs in on Indefiniteness in In Re Walter
The Federal Circuit agreed with the Patent Trial and Appeal Board's (PTAB) rejection of claims as indefinite in In Re: David Walter. Mr. Walter argued that the cited art did not teach a "block-like" artificial reef, while the examiner found that "block-like" was indefinite. The court noted:
Here, “block-like” is a term of degree without any accompanying guidance in the intrinsic record for determining its scope. The term ostensibly covers a range of shapes that are sufficiently “like” a “block” and excludes those that are not. But nothing in the intrinsic record offers “objective boundaries” for ascertaining whether a given shape falls into either category.