When Optimal Isn T Objective the Pitfalls of Indefinite Claims

Written by: Jacob R. Rosenbaum and Sarah Haj-Maharsi

Akamai Technologies, Inc. v. MediaPointe, Inc.

Before Taranto, Stoll, and Cunningham.  Appeal from the United States District Court for the Central District of California.

Summary: The Federal Circuit affirmed a district court’s finding that two patents were invalid for indefiniteness because the patents failed to provide objective boundaries for terms like “optimal” and “best.”

Media Pointe asserted claims from two patents directed to systems for routing streamed media via an “intelligent distribution network” against Akami. Akamai brought suit in the Central District of California, seeking a declaratory judgment of noninfringement of both patents. Media Pointe counterclaimed for infringement and Akamai sought a declaratory judgment of invalidity. The district court held that the claims using the terms “optimal” or “best” were invalid for indefiniteness under 35 U.S.C. §112. The court granted summary judgment of noninfringement for the remaining claims.

On appeal, the Federal Circuit affirmed the district court’s decision in its entirety. With respect to the indefinite terms, the Federal Circuit held that reasoned terms of degree such as “optimal” and “best” require objective boundaries. The Federal Circuit reiterated that a claim term is indefinite if there are multiple methods by which the claim limitation could be met and no guidance as to which one should be used. The Federal Circuit reasoned that although the specification taught certain factors that may be relevant to the analysis of what is “optimal” or “best,” the specification failed to explain which factors ought to be considered or how to balance those factors. The Federal Circuit affirmed the district court's summary judgment of noninfringement for the remaining claims.

Editor: Sean Murray