On August 30, 2013, Magistrate Judge Ramirez issued an opinion (available here) in H-W Technology v. Overstock.com. Overstock had moved for summary judgment, claiming that two claims of the patent-in-suit were allegedly invalid for indefiniteness. Judge Ramirez agreed.
First, Judge Ramirez held that one of the asserted claims was invalid because it issued without language approved of by the PTO. “Here, the error is a material limitation of the patent claim that Plaintiff has failed to correct. . . . The prosecution history discloses that the missing language was required, but it is impossible to tell what language is missing simply by reading the patent.” Judge Ramirez held that the Court lacked authority to correct the claim under these circumstances. Hence, the claim was invalid.
Second, Judge Ramirez held that the second asserted claim was invalid because it combined two statutory classes of invention (i.e., apparatus and method claims) in a single claim.