After a Markman hearing, Magistrate
The Federal Circuit reversed, holding that the district court had "applied an incorrect standard of 'unanswered questions'" requiring the questions to be answered in "the claim language, standing alone." Instead, definiteness requires that the "claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty." The district court erred by not considering "information in the specification that was not included in the claims" and by giving "no weight to the prosecution history." During prosecution, indefiniteness rejections had been resolved by adding claim limitations, including by an examiner's amendment, with the Federal Circuit reiterating that "[a]ctions by PTO examiners are entitled to appropriate deference." Applying the correct standard, the Federal Circuit held the claims were not indefinite.
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