Functional limitations in an apparatus claim do not render the claim indefinite when they merely recite a capability of a given element as opposed to requiring that the function be actually performed to trigger infringement. Here, for example, “a handheld device” apparatus that includes “an image sensor, said image sensor generating data” was found to be sufficiently definite because the “data generating” limitation only indicated that the associated structures have this capability and did not require that any data be actually generated by the user. “If an apparatus claim is clearly limited to an apparatus possessing the recited structure and capable of performing the recited functions, then the claim is not invalid as indefinite.” It may therefore be best to clearly recite apparatus claim elements as being “capable of” or “configured to” perform a given function rather using the gerund form of that function alone.
Background / Facts: The patent being asserted here is directed to a handheld pointing device that can be used to control the cursor on a projected computer screen, thereby improving a presenter’s ability to control the cursor while making a presentation to an audience. The claims recite “a handheld device” apparatus that includes “an image sensor, said image sensor generating data” and other similar “generating data” limitations.
Issue(s): Whether the inclusion of the “image sensor generating data” limitation renders the claim indefinite under 35 U.S.C. § 112, second paragraph, by making it unclear whether infringement occurs when an infringing system is assembled, or when the apparatus is used to perform the specified function.
Holding(s): No. “[T]he claims at issue here make clear that the ‘generating data’ limitation reflects the capability of that structure rather than the activities of the user. … [T]he ‘data generating’ limitations only indicate that the associated structures have this capability (for example, the image sensor and processor in claim 1) and do not require that any data be actually generated by the user. [] Unlike the claims in IPXL and Katz, the claims do not recite functionality divorced from the cited structure. Therefore, the claims do not reflect an attempt to claim both an apparatus and a method, but instead claim an apparatus with particular capabilities.”