Comments on: Indefiniteness “Can Be” Difficult under Nautilus

By: DanH

DanH — Thu, 19 Jun 2014 13:00:58 +0000

But the opinion seems to say that “can be” is *always* indefinite.

To the extent it suggests that, it’s wrong.

By: anon

anon — Thu, 19 Jun 2014 13:00:13 +0000

Lol indeed – as Malcolm sprints away.

By: anon

anon — Thu, 19 Jun 2014 12:58:35 +0000

“Well, that depends on what the definition of ‘is’ is.”

In the best Clinton tones. 😉

(and another indication that the ‘glossary’ movement is utterly asinine)

By: NWPA

NWPA — Thu, 19 Jun 2014 12:26:48 +0000

Can be is strange phrase to use. You don’t really get anything by using it. You should just put in their “configured to” and remove the “can be.” Can anyone think of any claim that has a different scope? I think this opinion is bogus. “Can be” is sloppy, but it is definite. If it “can be” in a claim, then is “is”.

By: John Roethel

John Roethel — Thu, 19 Jun 2014 03:55:31 +0000

I find the PTAB decision to be persuasive.

I also think it is important that a patent claim apprise the public of what does not infringe. The use of what is argued by the applicant to be “optional” language makes the “what does not infringe” analysis most problematic.

By: John Roethel

John Roethel — Thu, 19 Jun 2014 03:49:33 +0000

Joe lost his patent license and now he can’t drive.

By: Ned Heller

Ned Heller — Wed, 18 Jun 2014 22:14:31 +0000

You know anon, this was claim construction. But the district court was well aware of what went on in prosecutions such that “any spacing” would render the patent valid.

The construction of a linkage between spacing and the result is what allegedly saves the patent. But this really is not the way the claim reads.

By: Ken

Ken — Wed, 18 Jun 2014 20:41:59 +0000

But the opinion seems to say that “can be” is *always* indefinite. This seems tough to argue, because “can be” simply means “able to be,” and it’s well-settled that many adjectives ending in the suffix “-able/-ible” are not automatically indefinite.

By: Ken

Ken — Wed, 18 Jun 2014 20:38:53 +0000

“The only reason for including 51 non-limiting words in a claim that I can think of is to confuse the reader.”

I sometimes include non-limiting words to clarify what the limiting words mean.

By: anon

anon — Wed, 18 Jun 2014 20:01:38 +0000

Should they have argued inherency then, Ned?