CAFC Reverses on Indefiniteness Because Claim Terms Sufficiently Supported by Examples

Federal CircuitSonix Tech. Co., Ltd. v. Publ’ns Int’l, Ltd., No. 2016-1449, 2017 U.S. App. LEXIS 158 (Fed. Cir. Jan. 5, 2017) (Before Lourie, O’Malley, and Taranto, J.) (Opinion for the court, Lourie, J.)(The Federal Circuit reversed district court’s determination of indefiniteness under 35 U.S.C. § 112 ¶ 2 and the district court’s subsequent summary judgment of invalidity.)

Sonix Technology Co., Ltd. (“Sonix”) owns a patent that “describes a system and method for using a ‘graphical indicator’ (e.g., a matrix of small dots) to encode information on the surface of an object.” In contrast to a conventional graphical indicator, such as a bar code, Sonix’s patent claims to render the graphical indicator “visually negligible.” According to the patent, the graphical indicator “stores the same information as [a] bar code . . . but in a manner that does not ‘interfere with the other main information on the surface.’”

Sonix alleged that Publications International, Ltd., SD-X Interactive, Inc., Encyclopedia Brittannica, Inc., and Herff Jones, Inc. (collectively, “Appellees”) infringed certain claims of its patent. The Appellees initially requested a claim construction ruling for “visually negligible,” but withdrew their request, proposing that the term be given its ordinary meaning, to which Sonix agreed.

Expert witnesses for both parties repeatedly used the term “visually negligible” throughout their reports. After the close of fact discovery and after the parties agreed to an ordinary meaning for “visually negligible,” Sonix’s expert stated at his deposition that the term is “‘not a universal standard by any means because it depends on the visual acuity of the observer.’” The Appellees’ expert stated at his deposition that “‘visually negligible’ [is] subjective because ‘there is no objective test to define the boundary between visually negligible and visually non-negligible.’” Relying on these depositions, the Appellees amended their invalidity contentions and moved for summary judgment of indefiniteness.

The district court, agreeing with the Appellees, found that “defining the term ‘as reliant on the user’s perception provides no objective standard by which to measure the scope of the term –– the user’s perception becomes the measure and this is insufficient.’”

On appeal, the Court determined de novo review to be appropriate and then addressed the indefiniteness arguments. The Court explained, “Section 112 requires that a patent specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” (internal quotations omitted). The Court continued, “Even so, the Supreme Court has recognized that absolute precision is unattainable,” and “[t]he certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” (internal quotations omitted). Instead, “[C]laim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. . . . We have found terms of degree indefinite, however, when such guidance is lacking.” (internal quotations omitted).

In contrast to previous cases that “turned on a person’s tastes or opinion” and were “completely dependent on a person’s subjective opinion,” the Court found that here, “[t]he question whether something is ‘visually negligible’ or whether it interferes with a user’s perception, . . . involves what can be seen by the normal human eye. This provides an objective baseline through which to interpret the claims. . . . Thus, although the term may be a term of degree, it is not ‘purely subjective.’”

The Court found that the written description of Sonix’s patent included “a general exemplary design for a visually-negligible indicator,” “‘requirements for the graphical indicators being negligible to human eyes,’” and “two specific examples of visually-negligible indicators.” The Court found that these “statements [] provide guidance on how to create visually-negligible indicators, and specific examples that provide points of comparison for the result.” Further, the Court found that the Appellees failed to provide evidence that “human perception varies so significantly that reliance on it as a standard renders the claims indefinite.” The Court also pointed to lack of “apparent difficulty in determining the scope of ‘visually negligible’” throughout the prosecution history and two ex parte reexaminations. Specifically, the examiner in the second reexamination ultimately confirmed the patentability of the asserted claims on the basis of a declaration made by Sonix’s expert, in which Sonix’s expert declared that he created graphical indicators using the processes described by both Sonix’s patent and the combination of the cited prior art references, but only Sonix’s patented process produced a visually negligible graphical indicator.

The Court also found that the Appellees’ actions during litigation reflect that they understood the meaning of the term. The Court referred to the unhindered use of the term by both Sonix’s and the Appellees’ expert witnesses and the fact that the Appellees’ withdrew their request for construction of the term, instead favoring an ordinary-meaning construction. Moreover, “at no point before [the deposition of Sonix’s expert witness] did [the Appellees] contend that ‘visually negligible’ was indefinite, even though they contended that twenty-eight other terms were indefinite.” (emphasis in original).

The Court was careful to explain that its “holding in this case does not mean that the existence of examples in the written description will always render a claim definite, or that listing requirements always provide sufficient certainty.” Instead, its holding is simply that “visually negligible” is sufficiently supported by Sonix’s patent “to inform with reasonable certainty those skilled in the art of the scope of the invention.”

Practitioners prosecuting applications in which arguably subjective terms exist should include as much guidance as possible in the specification to define that term. It may prove vital to include requirements or examples.

The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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