Page 49 - IP Record
P. 49
The IP Record - 2014 47
IPO’s 4-Star Federal Circuit Summaries™
Ibormeith IP, LLC v. Mercedes-Benz USA, LLC 13-1007
LISTS OF INPUTS AND RAW INFOR- function of this means-plus-function limitation.
MATION DISCLOSED INSUFFICIENT Ibormeith said the required structure was embod-
STRUCTURE FOR MEANS-PLUS-FUNC- ied in an algorithm disclosed in the specifcation
TION PATENT CLAIM — October 23, 2013 in two fgures and a table. The Federal Circuit
— In an opinion by Judge TARANTO, the held the alleged algorithm failed to adequately
Federal Circuit upheld a district court summary defne structure to make the bounds of the claims
judgment that Ibormeith’s claims were indef- understandable. The table “merely list[ed] inputs
nite. The claims were for a vehicle monitor that without specifying any single formula or func-
sensed driver sleepiness and included a limitation tion.” The fgures depicted raw information and
to a “computational means” for weighing fac- placed no limitations on how values were to be
tors such as time of day, circadian rhythms, and calculated or combined.
steering transitions. Mercedes argued the claims
were indefnite because the specifcation failed to
disclose structure for performing the underlying
Commil USA, LLC v. Cisco Systems, Inc. 12-1045
GOOD FAITH BELIEF OF PATENT INVA- was no “principled distinction” between a good
LIDITY COULD NEGATE INTENT TO IN- faith belief of invalidity and a good faith belief
DUCE INFRINGEMENT — June 25, 2013 of no infringement. A good faith belief of no in-
— In an opinion by Judge PROST, a split Feder- fringement could show that an alleged “inducer”
al Circuit overturned a district court’s fnding of lacked the requisite specifc intent to encourage
inducement to infringe. Commil’s patent claimed another’s infringement. In an opinion dissenting
a method for providing mobile phone base station in part, Judge NEWMAN argued that good faith
“hand-offs” throughout a communications net- belief of invalidity applied only as a defense to
work. To rebut Commil’s inducement allegation, willful infringement. Judge O’MALLEY dis-
Cisco sought to present evidence of its good faith agreed with the majority on other issues.
belief that Commil’s patent was invalid. The dis-
trict court precluded Cisco’s evidence. In a case
of frst impression, the Federal Circuit found there
www.ipo.org
IPO’s 4-Star Federal Circuit Summaries™
Ibormeith IP, LLC v. Mercedes-Benz USA, LLC 13-1007
LISTS OF INPUTS AND RAW INFOR- function of this means-plus-function limitation.
MATION DISCLOSED INSUFFICIENT Ibormeith said the required structure was embod-
STRUCTURE FOR MEANS-PLUS-FUNC- ied in an algorithm disclosed in the specifcation
TION PATENT CLAIM — October 23, 2013 in two fgures and a table. The Federal Circuit
— In an opinion by Judge TARANTO, the held the alleged algorithm failed to adequately
Federal Circuit upheld a district court summary defne structure to make the bounds of the claims
judgment that Ibormeith’s claims were indef- understandable. The table “merely list[ed] inputs
nite. The claims were for a vehicle monitor that without specifying any single formula or func-
sensed driver sleepiness and included a limitation tion.” The fgures depicted raw information and
to a “computational means” for weighing fac- placed no limitations on how values were to be
tors such as time of day, circadian rhythms, and calculated or combined.
steering transitions. Mercedes argued the claims
were indefnite because the specifcation failed to
disclose structure for performing the underlying
Commil USA, LLC v. Cisco Systems, Inc. 12-1045
GOOD FAITH BELIEF OF PATENT INVA- was no “principled distinction” between a good
LIDITY COULD NEGATE INTENT TO IN- faith belief of invalidity and a good faith belief
DUCE INFRINGEMENT — June 25, 2013 of no infringement. A good faith belief of no in-
— In an opinion by Judge PROST, a split Feder- fringement could show that an alleged “inducer”
al Circuit overturned a district court’s fnding of lacked the requisite specifc intent to encourage
inducement to infringe. Commil’s patent claimed another’s infringement. In an opinion dissenting
a method for providing mobile phone base station in part, Judge NEWMAN argued that good faith
“hand-offs” throughout a communications net- belief of invalidity applied only as a defense to
work. To rebut Commil’s inducement allegation, willful infringement. Judge O’MALLEY dis-
Cisco sought to present evidence of its good faith agreed with the majority on other issues.
belief that Commil’s patent was invalid. The dis-
trict court precluded Cisco’s evidence. In a case
of frst impression, the Federal Circuit found there
www.ipo.org
