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ARTICLE · 24 FEBRUARY 2021

Conflicting Prosecution Statements Can Render Claims Indefinite

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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The district court held that because of the inconsistent positions in the intrinsic record, the claims reciting this term were indefinite.

United StatesIntellectual Property
Kenneth S. Guerra
Kenneth S. Guerra
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In Infinity Comput. Prods. v. Oki Data Ams., Inc., No. 2020-1189 (Fed. Cir. Feb. 10, 2021), the Federal Circuit affirmed the District of Delaware's finding that claims of U.S. Patent Nos. 6,894,811, 7,489,423, 8,040,574, and 8,294,915 were invalid as indefinite. The patents claimed the use of a fax machine as a printer or scanner for a personal computer. Neither the specification nor the original claims included the disputed term "passive link," but the patentee added it during prosecution to distinguish an anticipatory reference. In a subsequent ex parte reexamination, the patentee asserted an inconsistent definition of the term to antedate a different reference. The district court held that because of the inconsistent positions in the intrinsic record, the claims reciting this term were indefinite.

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