Docket No. 2016-1449
LOURIE, O’MALLEY, TARANTO
January 5, 2017
Brief Summary: DC decision that “visually negligible” is indefinite reversed as the meaning of the term is not “purely subjective” in view of the specification and prosecution history.
Summary: Sonix appealed from DC grant of SJ after determining certain claims of US 7,328,845 (previously confirmed in two ex parte reexaminations) relating to “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” (e.g., “illustrations or icons in a children’s book”) and an “optical device” invalid because the term “visually negligible” is indefinite (§ 112, para. 2). The ‘845 patent is described as improving on conventional methods of using “graphical indicators” such as bar codes by rendering such indicators “visually neglible” (e.g., no visible bar code on the cover of a book). “Visually neglible” was not construed by the DC as the parties agreed to the “ordinary-meaning construction”, although it “was used repeatedly in…expert reports”, and the court eventually held the term to be indefinite as “purely subjective” (“the claim language does not provide guidance on its meaning”, the “written description does not provide a person of ordinary skill in the art ‘with a meaning that is reasonably certain and defines objective boundaries’ of the claim scope” (Datamize, FC 2005), and “extrinsic evidence ‘highlights the problem with the subjective nature” of the term (although it also explained this evidence was not necessary to its conclusion); “present case…more similar to those concluding the claims were indefinite than to those holding otherwise. The FC reviews DC determination of invalidity de novo and its factual findings for clear error (Cox, FC 2016). It explained that the DC’s “conclusions of subjectivity and lack of an objective standard are not findings subject to clear error review; instead, they are conclusions relating to the meaning of the intrinsic evidence, and whether it conveys claim meaning with reasonable certainty” (“Teva II”, FC 2015). Under Nautilus (US 2014), “a patent’s claims, view in light of the specification and prosecution history” must “inform those skilled in the art about the scope of the invention with reasonable certainty” (“absolute precision is unattainable…we have rejected the proposition that claims involving terms of degree are inherently indefinite” (Interval Licensing, FC 2014 (“in an unobtrusive manner that does not distract a user” indefinite as “purely subjective”; Enzo, FC 2010 (“not interfering substantially” not indefinite); Datamize, FC 2005 (“aesthetically pleasing” indefinite) and “indefiniteness must be proven by clear and convincing evidence.” It also explained that “Datamize and Interval Licensing involved terms that were subjective in the sense that they turned on a person’s tastes or opinion” but that, here, “whether something is ‘visually negligible’ or…interferes with a user’s perception…involves what can be seen by the human eye…an objective baseline through which to interpret the claims” (Warsaw Orth., FC 2015). It found that while “the term may be a term of degree, it is not ‘purely subjective’” and the specification includes a “level of detail…closer to that provided in Enzo…guidance on how to create visually-negligible indicators, and specific examples that provide points of comparison for the result.” It also found the prosecution history supported a reversal of the DC decision since “[n]o one involved in either the first or second reexamination had any apparent difficulty in determining the scope of ‘visually negligible’” (also pointing to “[t]he examiner’s knowing allowance”) and that “[t]he parties’ experts also had no difficulty in applying” the term. Thus, the DC decision was reversed.