Search Team

Search by Last Name
A
B
C
D
E
F
G
H
I
J
K
L
M
N
O
P
Q
R
S
T
U
V
W
X
Y
Z

Intellectual Ventures I LLC v. T-Mobile USA, Inc.

Requirements for Claim Scope Disavowal are Exacting

Intellectual Ventures I LLC v. T-Mobile USA, Inc., __ F.3d __, 2018 WL 4201163 (Fed. Cir. Sept. 4, 2018) (Prost, MOORE, Reyna) (D. Del.: Stark) (3 of 5 stars)

Fed Cir vacates summary judgment of no infringement, affirms summary judgment of indefiniteness. The district court erred in adopting T-Mobile’s narrow claim interpretation, and the opinion rejects T-Mobile’s argument that the patent applicant disavowed the ordinary claim meaning. Two statements in the file history concerning what it meant for the claimed invention to be “application aware” were neither clear nor exacting enough to support T-Mobile’s reasoning that the invention could be “application aware” based only on a narrow set of information. The opinion also notes that a separate claim in the patent did apply this restricted scope; “If the patentee had intended to similarly restrict the resource allocation of claim 1, it could have done so using the language of claim 19, but did not.” Op. at 12. On remand, the district court should apply the ordinary meaning of the limitation.

The district court correctly held that the term “allocating means for allocating resources to said IP flow . . . so as to optimize end user application IP QoS requirements of said software application” is indefinite as to the function being claimed. Citing Datamize, 417 F.3d 1342 (Fed. Cir. 2005), the opinion reasons that “optimiz[ing] IP QoS requirements” is a term of degree with no meaningful baseline, as it will vary from end user to end user.

KEYWORDS: DISAVOWAL; INDEFINITENESS (YES)