Inconsistent Statements Made During Prosecution Can Render Even Well-Known Claim Terms Indefinite

The Court of Appeals for the Federal Circuit, in Infinity Computer Prods. v. Oki Data Ams., Inc., 987 F.3d 1053 (Fed. Cir. 2021), affirmed a lower court’s holding that the claim terms “passive link” and “computer” were indefinite because the patentee made contradictory arguments regarding the terms’ meanings during prosecution. The CAFC found that even the well-known term “computer” was indefinite because patentee argued for two mutually exclusive meanings of the term during prosecution – leaving the public with no notice of what was covered by patentee’s claims.

The full opinion is here: /Templates/media/files/Articles/20-1189_OPINION_2-10-2021_1730931.pdf