DC indefiniteness determination affirmed due to “inconsistent prosecution history statements”

Infinity Computer Products, Inc. v. OKI Data Americas, Inc.

Docket No. 2020-1012 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1189.OPINION.2-10-2021_1730931.pdf)

PROST, CLEVENGER, TARANTO

February 10, 2021

Brief Summary:  DC indefiniteness determination affirmed due to “inconsistent prosecution history statements”.

Summary:  Infinity appealed DC indefiniteness finding regarding US Pat. Nos. 6,984,811; 7,489,423; 8,040,574; and 8,294,915 directed to methods “of creating a scanning capability from a facsimile machine to a computer…via a passive link between” the two, “passive link” being the term found to be indefinite.  The FC panel explained that “[t]he term ‘passive link’ does not appear in the ‘811 patent specification” (‘811 being representative), and was “first introduced…during prosecution of the ‘811 patent to distinguish an anticipating prior art reference” (Perkins) by amending its claim to recite (among other things) data transfer…occurs ‘without interruption’”, referred to as “intervening circuitry” in arguments.  Those arguments were not accepted by the examiner, but “[e]ventually, Infinity overcame [the prior art] by amending the claim to require a ‘passive link’” and arguments, leading to issuance of the ‘811 patent.  Three ex parte reexaminations followed in which Infinity argued its invention antedated another prior art reference (Kenmochi) in view of the “passive link”, the Board finding the claims to be patentable.  Oki successfully argued to the DC that “passive link” is indefinite “because Infinity took conflicting positions on the endpoint of the ‘passive link’ during prosecution” (e.g., “took one position to overcome Perkins and a different position to antedate Kenmochi” regarding the nature of the “passive link”).  The FC panel reviewed the decision under the “reasonable certainty” Nautilus standard (US 2014), considering “the claims, specification, and prosecution history” (Teva, FC 2015 (“molecular weight” indefinite due to three possible “different measures”; “[a] statement made during prosecution of related patents may be properly considered in construing a term common to those patents”; “The public-notice function of a patent and its prosecution history requires that we hold patentees to what they declare during prosecution.”); InTouch, FC 2014; Krippelz, FC 2012 (“A patentee’s statements during reexamination can be considered during claim construction.”)).  It explained that “[i]ndefiniteness may result from inconsistent prosecution history statements where the claim language and specification on their own leave an uncertainty that, if unresolved, would produce indefiniteness”, and that the claims in this case “do not provide reasonable certainty about a crucial aspect of ‘passive link,’ namely, where it ends” (e.g., “we hold patentees to the actual arguments made, not the arguments that could have been made” (Tech. Props., FC 2017; “the Supreme Court has warned us against “viewing matters post hoc” to “ascribe some meaning to a patent’s claims” (Nautilus, US 2014); “An applicant’s invocation of multiple grounds for distinguishing a prior art reference does not immunize each of them from being used to construe the claim language.” (Andersen, FC 2007)).  The FC panel therefore affirmed the DC’s finding of indefiniteness.