Docket No. 2015-197-82, 2015-2044
PROST, WALLACH, HUGHES
October 27, 2016
Brief Summary: DC decision that “elongated” is indefinite affirmed (“an ordinarily skilled artisan cannot, without additional information, differentiate an ‘elongated’ core from a ‘non-elongated’ core”) but indefiniteness decision regarding “to heat sink” reversed (“no ‘zone of uncertainty’”).
Summary: GE appealed DC finding that the asserted claims of US 6,787,999 and 6,799,864 relating to dissipation of heat from light emitting diodes are indefinite. The terms “elongated” and “to heat sink” were held to be indefinite. The FC panel explained that the DC’s indefiniteness determination is reviewed “de novo, although as with claim construction, any factual findings by the district court based on extrinsic evidence are reviewed for clear error” (UltimatePointer, FC 2016). And under Nautilus (US 2014), “claims are indefinite when ‘read in light of the specification delineating the patetn, and the prosecution history,’ they ‘fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention’” (“Even if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope.” Halliburton, FC 2008) Regarding the ‘864 claims, the FC opinion stated that “‘[e]longated is undoubtedly a term of degree” which are “[not] inherently indefinite”; “the patent must provide ‘some standard for measuring that degree’ such that the claim language ‘provide[s] enough certainty to one of skill in the art when read in the context of the invention” (Biosig, FC 2015). And it explained that “for the asserted claims to be definite, the patent must provide that additional information in the form of ‘objective boundaries’” (Interval Licensing, FC 2014), noting that “a patentee need not define his invention with mathematical precision” (Invitrogen, FC 2005). It concluded, based in part of GE’s expert testimony that “an ordinarily skilled artisan cannot, without additional information, differentiate an ‘elongated’ core from a ‘non-elongated’ core” but also the prosecution history, that the term is indefinite. Regarding the ‘999 claim term “to heat sink”, the FC panel disagreed with the DC’s finding of indefiniteness because “whether a component heat sinks another component is an objectively defined fact: either heat is transferred between the components and heat sink, or it is not…‘to heat sink’ creates no ‘zone of uncertainty’” (Nautilus). Thus, the ‘999 claims were found not to be indefinite.