Federal Circuit Affirms District Court Finding that Fax/Scanner Patent Claims Are Indefinite

By Eileen McDermott
February 11, 2021

“As with the term ‘molecular weight’ in Teva, the claim language and specification do not provide reasonable certainty about a crucial aspect of ‘passive link,’ namely, where it ends.” – CAFC

ahttps://depositphotos.com/229492118/stock-photo-word-phrase-affirm-dictionary-highlighted.htmlThe U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential opinion affirming a Delaware district court finding that Infinity Computer Products, Inc.’s patent claims relating to using a fax machine as a printer or scanner for a personal computer were invalid for indefiniteness. Infinity Computer Products, Inc. v. Oki Data Americas, Inc. (Feb. 10, 2020). Chief Judge Prost authored the opinion.

The patents at issue were U.S. Patent Nos. 6,894,811; 7,489,423; 8,040,574; and 8,294,915, which share a specification. The term at issue was “passive link,” which refers to the link between the fax machine and the computer. According to the opinion:

The “principal object” of the claimed invention is “to provide a circuit for interfacing a PC and a facsimile to enable the facsimile to be utilized as a scanner or a printer for a PC and to accomplish all of the objectives of a scanner or a printer in a simple straightforward manner through the use of a circuit of highly simplified design and low cost.”

The term “passive link” was not part of the patent’s specification, but was introduced during prosecution to distinguish an anticipating prior art reference. With some difficulty, the patent eventually issued and survived three ex parte reexamination proceedings.

Infinity sued Oki Data in the U.S. District Court for the District of Delaware, where Oki Data argued that “the terms ‘passive link’ and ‘computer’ are indefinite because Infinity took conflicting positions on the endpoint of the ‘passive link’ during prosecution.” Specifically, Oki Data said that Infinity had argued the “passive link” ends at the input-output (I/O) bus (the “communication system that transfers data between components inside a computer, or between computers”) inside the computer during prosecution and then that that it ends at the computer’s port during reexamination. The district court agreed that Infinity had taken “materially inconsistent positions.”

In its discussion, the CAFC referred to Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1341 (Fed. Cir. 2015), in which the court found the term “molecular weight” to be indefinite. The opinion continued:

The record here is similar. As with the term “molecular weight” in Teva, the claim language and specification do not provide reasonable certainty about a crucial aspect of “passive link,” namely, where it ends. And far from resolving the uncertainty during prosecution, Infinity took conflicting positions during prosecution regarding the scope of “passive link.”

The court detailed what it said were Infinity’s contradictory arguments, holding that “the public-notice function of a patent and its prosecution history requires that we hold patentees to what they declare during prosecution” and concluding that “on the record before us…we agree with the district court that the intrinsic evidence leaves an ordinarily skilled artisan without reasonable certainty as to where the passive link ends and where the computer begins.”

Infinity variously argued that the district court misinterpreted its prosecution arguments; that its expert testimony went unrebutted; and that “the district court should not have held the claims indefinite based on a ‘single statement,’” but the CAFC was unpersuaded. Infinity also argued that “computer” is a familiar term with a “well-understood ordinary meaning,” but the court noted that, while “in a vacuum, it might seem odd to hold ‘computer’ indefinite…the indefiniteness here does not reside in the term ‘passive link’ or ‘computer’ on its own but rather in the relationship between the two in the context of these claims. And any resulting strangeness stems from Infinity’s own statements.”

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The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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Discuss this

There are currently 2 Comments comments.

  1. Model 101 February 14, 2021 11:16 am

    Hold the word ‘computer’ indefinite is very odd.

    Ignore expert testimony…very odd.

    Survive 3 re-exams…odd.

    The playing field is no longer even for inventors.

    This case is a great example.

  2. Anon February 15, 2021 7:53 am

    Model 101,

    It is not helpful to insert hyperbole with your own ‘restatement’ of the holding here.

    You run the risk of lowering your credibility while also masking the potential of a really good counterpoint.

    That counterpoint would be the requirement of anyone (Office or Court) denying a patentee the fruits of their innovation with the hand-waving of “generic computer.”

    Those that so attempt, should be forced to be “definite” themselves and precisely delineate exactly what is a “generic computer,” so that a true comparison could be established.

    The onus would be on the one desiring to deny by way of their choice of statements to deny.