Citing
William Shakeseare in
Microprocessor Enhancement Corp. v. Texas Instruments Inc. (April 1, 2008), the the U.S. Court of Appeals for the Federal Circuit held that a method claim was not invalid for indefiniteness even though it included specific structural features in the preamble of the form
1. A method of executing instructions in a pipelined processor comprising:
[extensive structural limitations of the pipelined processor];
the method further comprising:
[method steps implemented in the pipelined processor].
because it did not impermissibly claim mixed classes of subject matter. According to the opinion by Circuit Judge Gajarsa,
Although this seeming preamble within a preamble structure is unconventional,
its effect on the definiteness of claim 1 lacks the conclusiveness with which
King Claudius’s guilt is established by his reaction to Hamlet’s play within a
play. See William Shakespeare, Hamlet act 3, sc. 2. Method claim preambles often
recite the physical structures of a system in which the claimed method is
practiced, and claim 1 is no different. The conclusion of IPXL Holdings was
based on the lack of clarity as to when the mixed subject matter claim would be
infringed. 430 F.3d at 1384 ("[I]t is unclear whether infringement of claim 25
occurs when one creates a system that allows the user to [practice the claimed
method step], or whether infringement occurs when the user actually [practices
the method step]."). There is no similar ambiguity in claim 1 of the ’593
patent. Direct infringement of claim 1 is clearly limited to practicing the
claimed method in a pipelined processor possessing the requisite structure.
As the Bard of Avon himself might have quipped "Why may not that be the skull of a lawyer? Where be his quiddities now, his quillets, his cases, his tenures, and his tricks?"
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