By John L. Rogitz of Rogitz & Associates
1. Indefiniteness: Telcordia Technologies, Inc. v. Cisco Systems Inc. 2009-1175, -1184 affirms judgment that router patent is not invalid for indefiniteness when claim
recited "monitoring means", the function ascribed by court was "evaluating the integrity of the
multiple substrate communications" on two communication rings, and specification showed that each node had
a black-box controller for each ring. The CAFC notes that the absence of internal circuitry in the written description
does not automatically render the claim indefinite, and that the specification need only disclose structure adequate
to give the skilled artisan understanding of the metes and bounds of the claim, with expert testimony having
been presented declaring that this test was met.
2. Provisional Filing Date Can be Used for Prior Art Date: In re Giacomini,
2009-1400 confirms that a provisional filing date of a prior art reference under 35 U.S.C. §119 can be used
as a prior art date for the reference provided the provisional adequately describes the relied-upon subject matter
under 35 U.S.C. §112, first paragraph - as advised in MPEP §2136.03. This unremarkable issue was brought
to the fore by a little creative advocacy which argued that since a foreign priority
date of a later-filed U.S. patent under §119 could be used only to establish prio...
