Category Archives: Indefiniteness

Exemplary Claiming, Not Exemplary Claims

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When drafting claims it is permissible to use exemplary language (“for example” or “such as”). According to MPEP 2173.05(d) use of such language “does not by itself render the claim indefinite,” although the section then rattles off five examples where exemplary language was found to be indefinite. Even if exemplary language is permissible, is it a good idea?

Modern patents occasionally issue with claims containing exemplary language. Consider claim 14 of U.S. Patent No. 11972683:

14. The tracking arrangement as claimed in claim 13, wherein the “cooperative awareness message <CAM>” has the following vehicle-specific, vehicle-characteristic message parameters: type of different vehicles belonging to the road users, for example bus, automobile, motorcycle, etc., in the group; time stamp of vehicles belonging to the road users in the group should be close in terms of time; position of different vehicles belonging to the road users in the group should be adjacent; direction of vehicles belonging to the road users in the group should be the same; speed of vehicles belonging to the road users in the group should be comparable; length of different vehicles belonging to the road users is used as a group identifying feature; width of different vehicles belonging to the road users is used as a group identifying feature; issuing authority of the cryptographic certificates for the signature of the status messages; certificate hierarchy for validating the certificate for the signature of the status messages; repetition rate of the change of the parameters.

What do the examples do for this claim? Does the absence of “trucks” is the list affect the meaning of “type of different vehicles”?

What about claim 11 of U.S. Patent No. 11965836:

11. The detection assembly as claimed in claim 10, wherein the matrix array of light-emitting diodes is made of a longitudinal succession of strips of LED tape which are secured, for example glued, transversely to the inner surface.

Does “glued” affect the meaning of “secured”? There is a presumption that every word in a claim is to be given meaning, so what does “glued” for claim 11.

Then there are claims structured like claim 13 of U.S. Patent No. 11965415:

13. The method as claimed in claim 1, wherein the injected current comprises an alternating current signal having a frequency of 1 Hz or lower, for example 0.5 Hz or lower, or 0.25 Hz or lower.

Does the claim cover all frequencies below 1Hz? What is the significance of 0.5 Hz? Of 0.25 Hz?

While claims can include exemplary language, it may not result in exemplary claims.

Reading Limitations into the Claims and Failure to Follow Proper Obviousness Inquiry Required Non-obviousness Determination to be Vacated

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In Jannsen Pharmaceuticals, Inc., v. Teva Pharmaceuticals USA, Inc., [2022-1258, 2022-1307] (April 1, 2024), the Federal Circuit affirmed the district court’s determination that the claims of U.S. Patent NO. 9,439,906 were not indefinite, and vacated and remanded the determination that the claims were not obvious.

The patent, which generally relates to dosing regimens of paliperidone palmitate, is the last remaining Orange Book patent for Invega Sustenna. Teva First argued that the district court’s analysis of obviousness required Teva to show that it would have been obvious to use the recited dosing regimens for the general population of patients—i.e., a generalized dosing regimen. The court found that the prior art did not demonstrate population-wide safety and efficacy and thus did not teach a generalized dosing regimen. Teva contended that the claims were not directed to a generalized dosing regimen and therefore the district court asked for a showing of obvious-ness that went beyond what was claimed, and the Federal Circuit agreed, saying nothing in the claims requires that the regimen be used for—let alone be ideal for—the patient population generally or a certain percentage of the patient population.

Teva argued that the court also read a “mild” limitation into the renal-impairment claims, whereas the claims do not specify a level of renal impairment. Janssen countered that Teva presented an obviousness theory that was pred-icated on dosing a patient with mild renal impairment. The Federal Circuit agreed that many of the district court’s statements suggest that it understood the claims themselves to require administration to a patient with mild renal impairment, yet there was no such requirement in the claims.

Teva also argue that the court’s analysis was impermissibly rigid and did not comport with KSR or otherwise reflect the Federal Circuit’s obviousness jurisprudence. The Federal CIrcuit agree, noting that Instead of considering the prior art in context or in combination, the district court’s analysis seems to tackle the ex-press statements of each reference one-by-one—identifying each difference or dissimilarity between an individual ref-erence and the claims, but not fully assessing the teachings in toto. This seemingly siloed and inflexible approach left insufficient room for consideration of how background knowledge in the art would have impacted a POSA’s un-derstanding of, or motivation to modify, the primary refer-ences at issue, thereby inflating the significance of minor variations between the prior art and the claims.

Among other things, the Federal Circuit criticized the district court for concluding that in the pharma-ceutical context, if a prior art reference does not contain safety and efficacy data, there is no reason to combine it with other prior art references. The Federal Circuit also criticized the court for looking for Teva to demonstrate an explicit problem to provide motivation, notning among other things that the motivation analysis is not limited by the problem or need recognized by the inventors. The Federal Circuit said that:

A motivation “may be found explicitly or implicitly in market forces; de-sign incentives; the interrelated teachings of multiple patents; any need or problem known in the field of endeavor at the time of invention and addressed by the patent; and the background knowledge, creativity, and common sense of the person of ordinary skill.”

Overall, the district court’s analysis ran afoul of KSR’s basic mandate in a number of ways. It failed to consider the “interrelated teachings of multiple” references, “the back-ground knowledge possessed by a person having ordinary skill in the art,” or “the inferences and creative steps that a person of ordinary skill in the art would employ.” Instead, the court sought an explicit indication in the prior art that an improvement was re-quired—at times also suggesting that it was searching for an indication that the claims captured the singular way the protocol would be modified.

Finally, Teva argued and the Federal Circuit agreed, that the district court did not apply the correct test for teaching away. A teaching that a particular value is optimal is not a criticism of all other values, nor is the fact that a reference does not disclose the claimed value a teaching away. The Federal Circuit instructed that the district court should have analyzed whether the claimed value was “criticize[d], discredit[ed], or otherwise discourage[d].”

Indefiniteness

To satisfy the definiteness requirement, a patent’s claims, viewed in light of the specification and prosecution history, must inform those skilled in the art about the scope of the invention with reasonable certainty. The Federal Circuit has held that claim scope is not reasonably certain where a claimed characteristic can be measured in multiple ways, those different measurements “would typically yield a different result” when applied to the same sample, and the intrinsic record fails to provide reasonable certainty about which measurement was intended by the claims.

The claims contain a particle-size limitation, but do not specify what measurement technique should be used to determine whether the particle-size limitation is met. The specification states that the particle size can be measured by art-known conventional techniques, such as sedimentation field flow fractionation, photon correlation spectroscopy or disk centrifugation. Teva argued that the different particle-size measure-ment techniques, which were all allowed by the claims, would yield meaningfully different results. However, the district court found that the actual discrepancy in particle-size measurement that Teva relied on was “an outlier measurement taken with a defective device,” i.e., was not based on a discrepancy typical of the measurement technique used. Teva has not shown that the court’s outlier finding was clearly erroneous. As a result, the district court correctly determined that, on this record, Teva did not meet its burden to show that the challenged claims were invalid as indefinite.

Inartful Does Not Mean Indefinite

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In Maxell, Ltd. v. Amperex Technology Limited, [2023-1194] (Fed. Cir. 2024), the Federal Circuit reversed the finding of indefiniteness of the claims of U.S. Patent No. 9,077,035 were not indefinite.

The ’035 patent, titled “Nonaqueous Secondary Battery and Method of Using the Same,” describes and claims a lithium-ion battery with a positive electrode, a negative electrode, and a nonaqueous electrolyte. Claim 1 contained the limitation “wherein M1 represents at least one transition metal element selected from Co, Ni and Mn,” and further “wherein the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole,”

The district court found the claims invalid for indefiniteness, noting t reasoned that “the
plain language of the claim recites a contradiction, ”because the first limitation does not require the presence of cobalt (nickel or manganese suffices), so cobalt is “optional,”
whereas the second limitation does require cobalt.”

The Federal Circuit concluded that the district court’s rationale, was incorrect, but
not because a contradiction in a claim cannot produce indefiniteness. Rather, there is no contradiction in the claim language at issue in this case. The Federal Circuit explained:

The first of the two limitations at issue regarding M1– limitation [c]—states one requirement a transition metal element must meet to come within the claim: It must contain cobalt, nickel, or manganese. The second limitation at issue—limitation [f]—states a second requirement: The transition metal element must contain cobalt at a content of 30% to 100% by mole. It is perfectly possible for a transition metal element to meet both requirements. The two
limitations are therefore not contradictory. It makes no difference, at least here, that the two requirements are placed in separate limitations—rather than both appearing in limitation [c]. Such placement does not alter the logical point that it is possible to meet both requirements, meaning that there is no contradiction.

The Federal Circuit said that placement of the two requirements does not create an otherwise-nonexistent contradiction. That is so even if there was a more artful way of stating the two requirements within the same claim. And the record provides a readily discernible explanation for the placement: The second requirement for the M1 term was added during
prosecution to overcome a prior art reference that primarily used nickel as a transition metal. That there were other ways of drafting the claim does not render the claim language contradictory or indefinite.

The Inventor’s Lexicography Governs

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In Grace Instrument Industries, LLC v. Chandler Instruments Company, LLC, [2021-2370] (January 12, 2023), the Federal Circuit vacated the district court’s finding that the claims of U.S. Patent No. 7,412,877 were indefinite.

The ‘877 patent relates to a viscometer for measuring the viscosity of drilling fluid. The discometer uses a “enlarged” chamber located between a lower chamber, housing the sample fluid, and a pressurization fluid inlet, located in the top section of the viscometer’s
pressure vessel. This enlarged chamber is large enough such that the level of the sample fluid, which before pressurization initially fills both the lower chamber and the enlarged chamber, never falls below the transition point between the lower chamber and enlarged chamber when the application of the pressurization fluid compresses the sample fluid.

1. A pressurized device comprising:
(a) a pressure vessel within which is vertically disposed at least one top section filled
with a pressurization fluid of a first density and at least one lower section filled with a test sample of a second density,
(b) an enlarged chamber with reduced openings positioned between the at least one top section and the at least one bottom section for communicating pressure with said top section and said lower section within said pressure vessel,
(c) whereby said pressurization fluid would not mix with said test sample because of the nature of their density difference.

The district court determined that the term “enlarged chamber” as used in the claims was indefinite, making the asserted claims of the ‘877 patent invalid. The district court explained that “enlarged” is a “term of degree” that “necessarily calls for some comparison against
some baseline.” Finding that the ’877 patent “does not provide the requisite objective boundaries” for a skilled artisan, the district court held that “enlarged chamber” is indefinite.

The Federal Circuit said that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The ultimate conclusion that a claim is indefinite under 35 U.S.C. § 112, ¶ 2 is a legal conclusion, which we review de novo.

Grace argued before the district court that the term “enlarged chamber” should be construed as “the area between reduced openings that is large enough to hold excess test sample (i.e., the type of fluid normally used in these machines) to prevent mixing of pressurization fluid and test sample below the bottom fin during elevated pressurization.” The district court declined to adopt that construction, concluding that the ’877 patent fails to disclose objective
boundaries for a skilled artisan to know what the claimed “enlarged chamber” must be larger than. The Federal Circuit said that this was error.

The Federal Circuit said that the intrinsic record informs a skilled artisan that the ’877 patent and its claims are directed to a viscometer with an “enlarged chamber” that is large enough to prevent pressurization fluid from entering the lower section of the pressure vessel—where the viscosity of the test sample is being measured—during elevated pressurization. In other words, the enlarged chamber has to be able to contain enough sample fluid at the pre-pressurization stage such that, during pressurization, the sample fluid level does not fall below the bottom of the enlarged chamber and into the viscometer’s lower, testing section. Although “enlarged chamber” is not a term of art, the intrinsic record sufficiently guides a skilled artisan to the meaning of that term as used in the ’877 patent. Where the specification instructs as to the meaning of a claim term, “the inventor’s lexicography governs.”

The Federal Circuit concluded that the term “enlarged chamber” in the ’877 patent meant “a chamber that is large enough to contain excess test sample prior to pressurization to prevent mixing of the test sample and pressurization fluid in the lower measurement zone when the test sample is pressurized to maximum rated pressure.” The Court thus vacated the district court’s determination that “enlarged chamber” is indefinite, vacatef the district court’s invalidity determinations based thereon, and remanded for further proceedings
consistent with this opinion.

PTO Examiners are Entitled to Appropriate Deference

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In Nature Simulation Systems Inc. v. Autodesk, Inc., [2020-2257](January 27, 2022), the Federal Circuit reversed the district court’s judgement that U.S. Patent Nos. 10,120,961 and 10,109,105, both entitled
“Method for Immediate Boolean Operations Using Geometric Facets” were not invalid for indefiniteness.

The patents are for data structures and algorithms for the claimed method, which is described as a modification of a the Watson method a Boolean operation published in 1981 for analyzing and representing three-dimensional geometric shapes. There were two claim elements that the district court determined made the claims indefinite: “searching neighboring triangles of the last triangle pair that holds the last intersection point”; and “modified Watson method.” The district court held the claims indefinite based on the “unanswered questions” that were suggested by Autodesk’s expert.

In finding the claims indefinite, the district court declined to consider information in the specification that was not included in the claims. The Federal Circuit found that the district court misperceived the function of patent claims. The Federal Circuit also found that the applicant, in consultation with the examiner, amended the claim to add the disputed language. The Federal Circuit noted that the district court gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims. The court did not discuss the Examiner’s Amendment, and held
that since Dr. Aliaga’s questions were not answered, the claims are invalid.

The Federal Circuit said that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.” The Federal Circuit added “[t]he subject matter herein is an improvement on the known Watson and Delaunay methods, and partakes of known usages for established technologies. Precedent teaches that when ‘the general approach was sufficiently
well established in the art and referenced in the patent’ this ‘render[ed] the claims not indefinite.’”

The Federal Circuit concluded that ‘[I]ndefiniteness under 35 U.S.C. § 112 was not established as a matter of law,” and reversed the district court.

“Half-Liquid” is Wholly Indefinite

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In IBSA Institut Biochemique, S.A. v. Teva Pharmaceuticals USA, Inc., [2019-2400] (July 31, 2020), the Federal Circuit affirmed claims the district court determination that claims 1, 2, 4, and 7–9 of U.S. Patent No. 7,723,390 were invalid as indefinite under 35 U.S.C. § 112.

Central to the appeal was the parties’ dispute over the construction of “half-liquid,” which appears in independent claim 1.  IBSA proposed that the term “half-liquid” should be construed to mean “semi-liquid, i.e., having a thick consistency between solid and liquid.” Teva argued that the term “half-liquid” is indefinite or should be construed as “a non-solid, non-paste, non-gel, non-slurry, non-gas substance.”

The district court determined that IBSA’s proposed construction was not supported by the record, and that a skilled artisan could not otherwise ascertain a reasonably certain meaning for “half-liquid.”

The Federal Circuit began by noting that a claim is invalid for indefiniteness if its language, read in light of the specification and prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.  The Federal Circuit then turned to the language of the claim to determine whether the meaning of “half-liquid” is reasonably clear. Neither party meaningfully disputed that the claim language did not make the meaning of “half-liquid” reasonably clear. The Federal Circuit found that the claim language clarifies only that a “half-liquid” differs from a liquid.  The Federal Circuit then turned to the specification and prosecution history, which did not help. In fact, the fact that at one time a claim to a semi-liquid depended from the claim to the half-liquid established that half-liquid and semi-liquid were not synonyms.

Because the intrinsic evidence failed to establish the boundaries of a “half-liquid,” the  Federal Circuit turned to the extrinsic evidence, and found no error in the district court’s determination that the extrinsic evidence does not supply “half-liquid” with a definite meaning under § 112.

The Federal Circuit concluded that taken together, the intrinsic and extrinsic evidence fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention, and affirmed the judgment of the district court.

It is important to make sure the meaning of every claim term is clear from the specification, particularly where the claims have been translated from another language.

Federal Circuit Asks PTAB to Give it a Go and Decide Whether Indefinite Claims Were otherwise Patentable

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In Samsung Electronics America, Inc. v. Prisua Engineering Corp., 2019-1169, 2019-1260 (February 4, 2020) the Federal Circuit affirmed the PTAB determination that claim 11 of U.S. Patent No. 8,650,591 was invalid for obviosuness, but vacated the PTAB’s decision declining to decide whether claims 1-4 and 8 were patentable because these claims were indefinite.

The claims of the ‘591 patent are directed to methods and apparatuses for generating a displayable edited video data stream from an original video data stream. The Board determined that claim 1 (and claims 2-4 and 8) claimed both an apparatus and a method, and thus was indefinite under IPXL Holdings. Because the claims were indefinite, the Board declined to determine whether they otherwise defined patentable subject matter. The Board also found the claims indefinite because of the inclusion of “digital processing unit” which the Board found invoked 112(f), without identifying any corresponding stucture in the claims.

Samsung appealed arguing that the Board should have declared the claims in valid for indefiniteness. The Federal Circuit agreed with the Board that the Board did not have the authority to invalidate claims on that ground.

Samsung’s secondary argument was that the Board should have nonetheless assessed the patentability of claims 1 and 4–8 under sections 102 or 103. On this point, the Federal Circuit agreed.

The Federal Circuit noted that on the first ground of indefiniteness — mixed method and apparatus claiming, the indefiniteness problem was one of understanding when infringement occurred, and not necessarily what the claim actually means. Moreover, the Federal Circuit noted that the Board had previously held that IPXL-type indefiniteness does not prevent the Board from addressing patentability.

Thus the Federal Circuit remanded the case for the Board to attempt to apply 102 and 103 to the claims.

As to the second ground of indefiniteness, that “digital processing unit” invoked 112(f) without providing corresponding structure in the claims, the Federal Circuit disagreed. The Federal Circuit said that the question whether the term “digital processing unit” invokes section 112, paragraph 6, depends on whether persons skilled in the art would understand the claim language to refer to structure, assessed in light of the presumption that flows from the drafter’s choice not to employ the word “means. The Federal Circuit said that the Board pointed to no evidence that a person skilled in the relevant art would regard the term “digital processing unit” as purely functional. In fact, the patent owner argued to the Board, based on testimony from its expert (the inventor), that the digital processing unit recited in the claims is “an image processing device that people in the art are generally familiar with.” Moreover, the fact that claim 1 required the “digital processing unit” to be operably connected to a “data entry device” supports the structural nature of the term “digital processing unit,” as used in the claim.

The Federal Circuit rejected the Board’s conclusion that the term “digital processing unit,” as used in claim 1, invoked means-plus-function claiming,
and that for that reason claims 1 and 4–8 cannot be analyzed for anticipation or obviousness.

Clearly Defining A Term Without Providing Any Way to Determine When it has Been “Optimized” as Claimed Dooms Claims Under 112

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In Intellectual Ventures I LLC v. T-Mobile USA, Inc., [2017-2434, 2017-2435](September 4, 2018), the Federal Circuit affirmed the district court’s determination that the claims of U.S. Patent No. 6,640,248 were indefinite, and vacated and remanded summary judgment of non-infringement because of erroneous claim construction.

At issue was the term “Application-Aware Resource Allocator.”  The district court  adopted T-Mobile’s construction of “application-aware resource allocator” as requiring that when allocating bandwidth, the application-aware resource allocator must take into account information obtained from the application layer 7. However the Federal Circuit determined that  application awareness requires only that the resource allocator allocate resources based on application type, which can be discerned using information obtained from any of network layer 3, transport layer 4, or application layer 7.  The plain language of the claims, the specification, and the prosecution history all support this
construction. The Federal Circuit rejected T-Mobile’s arguments about disavowal, noting disavowal is an “exacting” standard under which it must be established that the
patentee demonstrated an intent to deviate from the ordinary and accustomed meaning of a claim term through expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope, and the statements in the prosecution history did not meet this exacting standard.

On the definiteness issue, the Federal Circuit found that the district court did not erroneously fail to consider the structure after determining that the function was indefinite.  The Federal Circuit concluded that the claim requirement of optimizing QoS requirements was entirely subjective and user-defined. The Federal Circuit pointed out that the ’248 patent analogizes QoS to “a continuum, defined by what network performance characteristic is most important to a particular user” and characterizes it as “a relative term, finding different meanings for different users.” The patent concluded that ultimately,“the end-user experience is the final arbiter of QoS.”  Thus while specification clearly defines that the QoS relates to the end-user experience, it fails to provide one of ordinary skill in the art with any way to determine whether QoS has
been optimized.

 

 

 

Intervening Rights Apply When There Is a Product that Infringes the Original Claim that Does Not Infringe the Amended Claim

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Presidio Components, Inc. v. American Technical Ceramics Corp., [2016-2607, 2016-2650] (November 21, 2017) the Federal Circuit affirmed the district court’s holdings that the claims are not indefinite and that ATC is entitled to absolute intervening rights because a substantive amendment was made during reexamination, but reversed the award of lost profits and remanded for determination of a reasonable royalty.
The case involved U.S. Patent No. 6,816,356 on a multilayer capacitor.

1. A capacitor comprising:
a substantially monolithic dielectric body;
a conductive first plate disposed within the dielectric body;
a conductive second plate disposed within the dielectric body and forming a capacitor with the first plate;
a conductive first contact disposed externally on the dielectric body and electrically
connected to the first plate; and
a conductive second contact disposed externally on the dielectric body and electrically connected to the second plate, and
the second contact being located sufficiently close to the first contact in an edge to
edge relationship in such proximity as to form a first fringe-effect capacitance with
the first contact that is capable of being determined by measurement in terms of a
standard unit.

Regarding indefiniteness, the claim required “first fringe-effect capacitance with
the first contact that is capable of being determined by measurement in terms of a
standard unit.”  Although industry standards for insertion loss testing had not been published at the time the patent was filed, Presidio’s expert testified that insertion loss testing had been well known for many decades and that a person of ordinary skill could use insertion loss measurements to measure capacitance in terms of Farads, the standard unit of measurement for capacitance.   Presidio’s expert further testified that a person of skill in the art would know how to measure fringe-effect capacitance by using insertion loss measurements. The Federal Circuit said that a claim is not indefinite if a person of skill in the art would know how to utilize a standard measurement method, such as insertion loss, to make the necessary measurement, adding that a patent need not explicitly include information that is already well
known in the art.  The Federal Circuit noted that if a skilled person would choose an established method of measurement, that may be sufficient to defeat a claim of indefiniteness, even if that method is not set forth in haec verba in the patent itself.

On the issue of intervening rights, Presidio contested the application of absolute intervening rights.  The Federal Circuit observed that the owner of a patent that survives reexamination is not entitled to infringement damages for the time period between the date of issuance of the original claims and the date of issuance of the reexamined claims if the original and amended claims are not “substantially identical.  In other words, the Federal Circuit said, if an amendment during reexamination makes a substantive change to an original claim, the patentee is only entitled to infringement damages for the changed claim for the period following issuance of the reexamination certificate.  The Federal Circuit reviewed the district court’s assessment of the scope of the original and reexamined claims de novo, and agreed that the scope had changed.  Presidio argued that the scope of the claims did not change because its stated goal in amending the claims was to adopt the district court’s construction in prior litigation.  However, the Federal Circuit said that the patentee’s intent in making the
amendment is not determinative or controlling in determining claim scope.  The relevant inquiry is whether the scope of the amended claims is actually identical to the scope of
the original claims based on normal claim construction analysis, articulated in Phillips. To determine whether an amended claim is narrower in scope, one determines whether there is any product or process that would infringe the original claim, but not infringe the amended claim. The Federal Circuit found that while the construction of the prior claim required that the fringe capacitance be determined, it did not specify it be determined by testing, as the amended claim required, so the claims did in fact have different scopes.

On the issue of lost profits, Presidio claimed lost profits for its sales of the BB capacitors, which Presidio claimed were adversely affected by the sale of ATC’s infringing 550 line of capacitors.  To recover lost profits, the Presidio had to show a reasonable probability that, “but for” infringement, it would have made the sales that were made by the infringer.  “But-for” causation can be proven using the four factor test in Panduit, which requires the patentee to show: (1) demand for the patented product; (2) an absence of acceptable, noninfringing substitutes; (3) manufacturing and marketing capability to exploit the demand; and (4) the amount of profit that would have been made.  A patentee can recover lost profits even if its product does not practice
the claimed invention, where the product directly competes with the infringing device.  Although the BB capacitor does not practice the ’356 patent, Presidio could still recover lost profits because the BB capacitor competes directly with the infringing 550
capacitors.  However the correct inquiry under Panduit is whether a non-infringing alternative would be acceptable compared to the patent owner’s product, not whether it is a substitute for the infringing product.  Thus while defendant’s 560L product was not a an adequate substitute for the accused 550 product, it might be an adequate non-infringing substitute for Presidio’s BB.  The Federal Circuit found that Presidio failed to prove that the 560L was not an acceptable substitute for its BB product, and reversed the award of lost profits, and remanded for a determination of a reasonable royalty.

The Federal Circuit found no abuse of discretion in the district court’s refusal to award increased damages despite the finding of willfulness.  The Federal Circuit also vacated the injunction in view of its reversal of the lost profits award, and remanded the case for the district court to redetermine the propriety of a permanent injunction.

 

Breadth is not Indefiniteness; If the Relevant Skilled Artisan has Reasonable Certainty as to What is Covered the Claim is Not Indefinite

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In BASF Corp. v. Johnson Matthey Inc., [2016-1770](November 20, 2017), the Federal Circuit reverse the judgment of invalidity for indefiniteness of U.S. Patent No. 8,524,185,
which describes and claims systems for performing catalytic conversion of nitrogen oxides (NOx) in an exhaust gas stream, and remanded.

The ’185 patent claims a partly-dual-layer arrangement of catalytic coatings on a substrate over which exhaust gas passes, e.g., the walls of a flow-through chamber having a honeycomb structure, whose function is to remove NOx from a stream of exhaust gas while minimizing the amount of ammonia that ends up being released
from the system.  The claims require a “composition . . . effective to catalyze” or a “composition . . . effective for catalyzing.”  The accused infringer argued, and the district court agreed, that the phrases are indefinite, because the “effective to catalyze” language used to identify the claim compositions is functional, and there are no objective boundaries on (1) what amount of effectiveness is required, or (2) how to measure the effectiveness.

The Federal Circuit framed the issue of indefiniteness after Nautilus as: would the “composition . . . effective to catalyze” language, understood in light of the rest of the patent and the knowledge of the ordinary skilled artisan, have given a person of ordinary skill in the art a reasonably certain understanding of what compositions are covered?  The Federal Circuit found that the district court’s analysis supplied no basis to answer this question in Johnson’s favor.

While the district court focused on the functional nature of the language, Federal Circuit noted that the Nautilus standard of “reasonable certainty” does not exclude claim language that identifies a product by what it does. The Federal Circuit said that nothing inherent in the standard of “reasonable certainty” precludes a relevant skilled artisan from understanding with reasonable certainty what compositions perform a particular function, and noted that it has held that nothing in the law precludes, for indefiniteness, “defining a particular claim term by its function.”  Rather, what is needed is a context-specific inquiry into whether particular functional language actually provides the required reasonable certainty.

The district court also noted that the claims did not recite a minimum level of function needed to meet the “effective” limitation nor a particular measurement method for determining effectiveness.  However the Federal Circuit said that the mere observation of information not recited did not answer the question of whether a person of ordinary skill in the art would need to be given the level and measurement information to understand, with reasonable certainty, whether a composition is “effective to catalyze” the SCR (of NOx) or AMOx reactions.

While the district court said that without this information a person of ordinary skill in the art could not determine which materials are within the limitations and which are not, the Federal Circuit said this conclusion was “entirely unsupported”. The Federal Circuit said that the district court did not consider that the specification makes clear that it is the arrangement of the catalysts, rather than the selection of particular catalysts, that purportedly renders the inventions claimed in the ’185 patent a patentable advance over the prior art.  The Federal Circuit found that the claims and specification let the public know that any known catalysts can be used as long as they play their claimed role in the claimed architecture.

The district court credited the accused infringer’s argument that “a practically limitless number of materials” could meet the claim requirements, and treated this scope as indicating that the claims, as written, fail to sufficiently identify the material  compositions. However the Federal Circuit admonished: “breadth is not indefiniteness.” The Federal Circuit found no persuasive support for the necessary conclusion that a relevant skilled artisan would lack reasonable certainty as to what compositions
are “effective to catalyze” the reactions at issue.

The Federal Circuit focused on the point of novelty, noting:

The intrinsic evidence in this case makes clear that the asserted advance over the prior art is in the partly-dual-layer arrangement to create a two-phase operation for performing the identified conversion processes, not in the choices of materials to perform each of the required catalytic processes. It is in this context that the question of the certainty or uncertainty experienced by a relevant skilled artisan in understanding the claims, read in light of the specification, is presented. And it is in this context that the relevant skilled artisan would be informed by the specification’s numerous examples of qualifying compositions A and B,

The Federal Circuit concluded that the record did not contain intrinsic or extrinsic evidence that would support a judgment of indefiniteness.