Michael P. Visconti, a senior associate in Nutter's Intellectual Property Department, analyzed the Federal Circuit's recent decision in UltimatePointer v. Nintendo (Fed. Cir. Mar. 1, 2016) which provides a reminder of the need to use caution when drafting a claim that could be read to cover both a device and a method of use in IPFrontline. In the article, "When Are Method/Device Hybrid Claims Indefinite?," Mike notes that even though UltimatePointer's claims ultimately survived an indefiniteness challenge, this case provides an important reminder of the need to take care when drafting claims to avoid reciting user actions in a system or apparatus claim. He points out that the case is also a reminder to those challenging or evaluating the validity of a claim that it may be possible to show indefiniteness based on impermissible method/device hybrid claiming.
Originally published on April 29, 2016
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