Determining Claim “Indefiniteness” Is Part Of Duty To Construe Claims: “A determination of claim indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty as the construer of patent claims.” Datamize (Fed. Cir. 08/05/05); Ernie Ball (Fed. Cir. 01/24/13) (non-precedential) (invalidating claims for indefiniteness, even though not specifically argued below, as part of duty to construe claims).
Construction Can Establish Sec. 112(1/a) Invalidity Defenses: E.g., where Spec. mentions two alternatives but enables only one, a construction including both alternatives will establish invalidity. Auto. Techs. Int’l (Fed. Cir. 09/06/07) (claims’ “sensor” was construed to cover both mechanical and electronic sensors, but disclosure enabled only mechanical sensors so claims invalid). Where claims’ particle-size limitations were construed broadly to cover either pre-formulation or post-formulation particle size, written-description invalidity affirmed because Spec. did not show possession of invention of controlling particle size post formulation. Eli Lilly (Fed. Cir. 09/01/10).
Construction Governs Proofs Need For Establishing Date Of Invention: Intellectual Ventures (Motorola) (Fed. Cir. 05/31/17) (non-precedential) (vacating PTAB unpatentability decision based on reference patent owner tried to predate by showing an earlier date of invention; PTAB erred by requiring patent owner corroboration of a feature that PTAB refused to include in its claim construction).
TIPS Re Claim Construction And Sec. 112(6/f):