Typhoon, Inc. v. Dell, Inc. et al.


Docket No. 09-1589

RADER, NEWMAN, PROST
November 4, 2011

Subject matter: claim construction, indefiniteness

Brief summary: Several claim terms in computer-related apparatus claims were defined to require that those structures be programmed to have a function. To be its own lexicographer, the patentee’s new definition must be made “with reasonable clarity, deliberateness, and precision” (in citing Abbott, FC 2003). An algorithm may be presented as a “mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure”.

Summary: Typhoon appealed USDC ED TX decision finding its patents relating to computer having a touch screen invalid for indefiniteness and non-infringed. The DC’s construction of several claim terms were disputed by Typhoon. Typhoon argued that the terms “memory for storing” and “operating in conjunction” were incorrectly defined by the DC to include a “use” limitation in an apparatus claim because the device has to be programmed to actually perform the function (Microprocessor, FC 2008; Fantasy Sports, FC 2002; Telemac, FC 2001; High Tech Med., FC 1995 (the fact that the accused device could be altered in a way that satisfies the claim term did not lead to infringement)). However, the FC agreed with the DC that the specification required that those parts of the device must actually be programmed (Phillips, FC 2005). A similar conclusion was reached regarding the term “processor for executing” but was based on the prosecution history (Phillips, FC 2005). Typhoon unsuccessfully argued that it was its own lexicographer regarding the term “keyboardless” such that it did not have the ordinary meaning “without a keyboard” and could include “mechanical keyboards”. However, the FC agreed with the DC finding that the specification made the distinction and the definition argued by Typhoon was not made “with reasonable clarity, deliberateness, and precision” (in citing Abbott, FC 2003). Thus, the non-infringement decision related to those terms was affirmed. The DC also found the term “means for cross-referencing” indefinite because specification did not contain sufficient descriptive text of an “algorithm” by which the skilled artisan would “know and understand what structure corresponds to the means limitation” (Finisar, FC 2008; Biomedino, FC 2007)). But the FC agreed with Typhoon that the DC was incorrect (e.g., “Precedent and practice permit a patentee to express that procedural algorithm “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure…The defendants have directed us to no evidence that a programmer of ordinary skill in the field would not understand how to implement this function.”) Thus, the judgement of invalidity of claims containing this term was reversed.

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