In Infinity Computer Products, Inc. v. Oki Data Americas, Inc. The U.S. Court of Appeals for the Federal Circuit affirmed a district court’s decision to invalidate US Patent. No. 6,894,811 (‘811) and three other related patents due to indefiniteness.
Patent ‘811 was directed to “using a fax machine as a printer or scanner for a personal computer.” Claim 1 is reproduced below:
A method of creating a scanning capability from a facsimile machine to a computer, with
scanned image digital data signals transmitted through a bi-directional direct connection via a passive link between the facsimile machine and the computer, comprising the steps of:
by-passing or isolating the facsimile machine and the computer from the public network telephone line;
coupling the facsimile machine to the computer;
conditioning the computer to receive digital facsimile signals representing data on a scanned document; and
conditioning the facsimile machine to transmit digital signals representing data on a scanned document to the computer, said computer being equipped with unmodified standard protocol send/receive driver communications software enabling the reception of scanned image signals from the facsimile machine, said transmitted digital facsimile signals being received directly into the computer through the bi-directional direct connection via the passive link, thereafter, said computer processing the received digital facsimile signals of the scanned document as needed. (Emphasis Added)
At issue in this case was the term ”passive link”. The term passive link was not originally in the application or in the parent Application No. 08/226,278 (‘ 278). Instead, the term was introduced into the claims to overcome an anticipation rejection of US Pat. No. 5,452,106 (Perkins). Perkins was directed to using a fax machine as a scanner or printer for a computer.
In order to overcome the rejection, the Applicant asserted that their method “creates a passive link between the facsimile machine and the computer in order to accommodate the signal transfer for printing or scanning” and amended the claim to include the term passive link. Additionally, the Applicant argued the claimed passive link transmits data directly to the I/O bust of the computer without intervening circuitry. In contrast, Perkins relied on intervening circuity. As a result of this argument and amendment, Patent ‘811 was granted.
Ex Parte Reexamination:
Patent ‘811 was subject to an ex parte reexamination. During the reexamination, Infinity sought to antedate prior art reference US Patent 5,900,947 (‘947) by arguing priority to the ‘278 Application.
In order to antedate the Patent ‘947, Infinity attempted to show that term passive link was supported in the ‘278 application. Infinity, asserted that Figs. 2b-2d of ‘278 application disclosed a RJ-11 telephone cable and that the RJ-11 was a direct and passive link. However, Figs. 2b-d, depicted the use of interface circuitry similar to the Perkins reference. Infinity’s assertions were in direct contrast to the arguments they made during the initial patent prosecution.
The Federal Circuit, after reviewing the entire prosecution history of Patent ‘811, determined the term passive link was indefinite. Specifically, the court stated that statements related to the term passive link were inconsistent throughout the prosecution history. As a result, the patent was invalidated due to indefiniteness.
Implications of the Decision:
The Federal Circuit’s recent decision serves as a reminder that contradictory positions taken during prosecution can render claims indefinite. Therefore, during the course of prosecution the Applicant should take into consideration previous arguments before making claim amendments and presenting new arguments.