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“Substantial” Is Precise Enough but Means-Plus-Function Claims Need More Specificity

On January 4, 2016, District Judge Shira A. Scheindlin held that several phrases using the term “substantial” were sufficiently definite and did not require construction, while finding that several of plaintiff Verint Systems Inc.’s (“Verint”) claims invoked means-plus-function (“MPF”) claiming and were invalid for indefiniteness.

Defendant Red Box Recorders Ltd. (“Red Box”) argued that use of the terms of degree “substantial” and “substantially” rendered the patents invalid for indefiniteness because those terms “do not draw a temporal bright line between what is ‘non-substantial versus substantial synchronization.’”  The Court rejected this argument, explaining that “terms of degree may be used ‘to describe the invention with precision appropriate to the technology.’” (quoting Verve, LLC v. Crane Cams, Inc., 322 F.3d 1116, 1120 (Fed. Cir. 2002)).  Use of the term substantial “is warranted here to account for latency between the data to be synched, system lag, or other potential variance inherent in applying the claimed invention on different computing systems and across telecommunications layouts.”  Further, the court noted that the functions described in the claims aided in clarifying the scope of the term “substantial.”  Judge Scheindlin also found that these terms could be readily understood by a layperson and thus did not require construction.

However, the Court agreed with Red Box that the claims of five different patents were invalid for indefiniteness because, despite not using the magic “means for” language, they invoked MPF claiming without adequately disclosing how the claimed functions are performed.   Judge Scheindlin found the phrases “computer application,” “communication monitoring system,” “monitoring device,” and “an analysis module configured to” all to include nonce terms that did not provide any limiting structure to the corresponding claims.  Judge Scheindlin noted that these five claims did not satisfy the requirements of § 112 ¶ 6 because at best the specification merely provided high level descriptions of what the invention “could do.”  Further, the specification failed to include either of the terms “monitoring device” or “analysis module,” much less provide the requisite algorithms to actually produce those claimed functions.

Case: Verint Sys. Inc. v. Red Box Recorders Ltd., No. 14-cv-5403 (SAS), 2016 BL 1071 (S.D.N.Y. Jan. 4, 2016).  The patents in suit are U.S. Patent Nos. 5,790,798; 6,510,220; 7,203,285; 7,774,854; 8,189,763; RE 43,324; and RE 43,386.