By David Yucht, J.D.
The federal district court in Marshall, Texas, has determined that that wireless communications system patent claims asserted by Intellectual Ventures I, LLC (Intellectual Ventures)—all of which used the term "optimize"—were invalid as indefinite. Accordingly, the court granted summary judgment in favor of T-Mobile USA, Inc., dismissing a number of patent infringement claims brought by patent assertion entity Intellectual Ventures (Intellectual Ventures I LLC v. T Mobile USA, Inc., November 6, 2018, Gilstrap, J.).
Patent infringement suit. Intellectual Ventures brought suit alleging that mobile communications service provider, T-Mobile, infringed several of its patents involving wireless communication systems. Intellectual Ventures and T-Mobile agreed that the patents-in-suit all shared a common specification. Asserting that certain claim terms used by Intellectual Ventures were too vague to be enforced, T-Mobile brought a motion for summary judgment, contending that the patent claims were invalid as indefinite.
Indefiniteness. Finding that Intellectual Ventures’ patent claims lacked sufficient objective boundaries for those of skill in the art to understand the scope of the claims, the court granted T-Mobile’s motion. The court noted that claim language employing terms of degree may be considered definite when it provides enough certainty to a knowledgeable person in the context of the invention. Although absolute precision is not required, a claim must provide objective boundaries for those of skill in the art. A term fails to provide notice of its scope if it depends on the reader’s opinion to define it.
Various claims in the patents held by Intellectual Ventures contained the term "optimize." T-Mobile argued that terms reciting "optimize" limitations were indefinite for failing to satisfy statutory requirements. In particular, T-Mobile challenged the definiteness of the claim terms "to optimize end-user quality of service (QoS) for an Internet Protocol (IP) flow," "so as to optimize end-user quality of service (QoS) associated with said IP flow," and "so as to optimize end-user internet protocol (IP) quality of service (QoS)."
The court found that the use of the word "optimize" was too indefinite to enable industry experts "to understand the scope of the claims." In fact, the manner in which the term "optimize" was used in the patent specifications involved multiple definitions of the term. For example, the specification referred to "optimal" performance in terms of handling communications in ways that depended on the types of data being communicated. However, the specification further explained that optimizing QoS ultimately depended on how "the user define[d] it." This language was too nebulous to allow Intellectual Ventures to pursue its patent infringement suit as to these claims.
This case is No. 2:17-cv-00577-JRG.
Attorneys: Martin Jay Black (Dechert LLP) for Intellectual Ventures I LLC. Douglas Mark Kubehl (Baker Botts LLP) for T Mobile USA, Inc., T-Mobile US, Inc., Ericsson Inc. and Telefonaktiebolaget LM Ericsson.
Companies: Intellectual Ventures I LLC; T Mobile USA, Inc.; T-Mobile US, Inc.; Ericsson Inc.; Telefonaktiebolaget LM Ericsson
MainStory: TopStory Patent TexasNews
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