On February 10, 2021, the Federal Circuit in
Infinity Computer Products, Inc. v. Oki Data Americas, Inc., No. 20-1189 (Fed. Cir. 2021) affirmed a decision by the U.S. District Court of Delaware that patent claims were invalid for indefiniteness based on conflicting positions taken by the patentee during prosecution. Specifically, the Federal Circuit held that the conflicting positions leave one of ordinary skill without reasonable certainty regarding the scope of the invention. This Federal Circuit decision is a reminder to patent applicants that piecemeal success before the Patent Office that does not conform to a coherent overarching prosecution strategy can invalidate patent rights.
Thursday, February 18, 2021
In deciding whether use of the term “passive link” to define a connection between a computer terminal and a fax machine rendered a patent claim indefinite, the US Court of Appeals for the Federal Circuit affirmed the district court’s finding of invalidity based on conflicting statements made by the patent owner during prosecution.
Infinity Computer Products, Inc. v. Oki Data Americas, Inc., Case No. 20-1189 (Fed. Cir. Feb. 10, 2021) (Prost, C.J.)
Infinity owns a patent directed to providing a circuit for interfacing a personal computer with a facsimile machine to enable the facsimile to be used as a scanner or a printer for a personal computer. The patent seeks 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 patent claims recite that this functionality is accomplished “through a bi-directional direct connection
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On February 10, 2021, the Federal Circuit held that the term “computer” was indefinite because the prosecution history included arguments distinguishing prior art references that relied on conflicting understandings of the term.
Infinity Computer Prods., Inc. v. Oki Data Am., Inc., No. 2020-1189 (Fed. Cir. Feb. 10, 2021).
Infinity Computer Products, Inc. (“Infinity”) sued Oki Data Americas, Inc. (“Oki”) for infringement of U.S. Patent 6,894,811 (the “’811 patent”) and three other patents that share a common specification with the ’811 patent (collectively, the “asserted patents”). The asserted patents covered systems and methods for using a fax machine as a printer and scanner for a computer. The asserted claims recited that a “passive link” was used to connect the computer to the fax machine.