DC indefiniteness and invalidity findings affirmed as claims lack “reasonable certainty”

TVnGO Ltd. (BVI) v. LG Electronics, et al.

Docket No. 2020-1837 (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1837.OPINION.6-28-2021_1796547.pdf) (Non-precedential)

PROST, SCHALL, REYNA

June 28, 2021

Brief Summary:  DC indefiniteness and invalidity findings affirmed (no reasonable certainty). Summary:  TVnGO appealed DC finding that the claims of five patents that share a specification directed to “a TV-Internet Integration box having the ability to merge broadcast TN signals with IP packet data at a customer site” are indefinite (pre-AIA section 112 based on 2005 filing date) and therefore invalid.  The FC panel reviewed the Nautilus (US 2014) indefiniteness standard (“precise enough to afford clear notice of what is claimed”, “particularly pointing out and distinctly claiming the subject matter”, “reasonable certainty”), the DC’s claim construction under the Phillips “ordinary and customary meaning” standard (FC 2005; “in light of the patent’s specification and prosecution history” (Nautilus)), and the indefiniteness determination de novo (“clear and convincing evidence” (Cox, FC 2016)).  The phrases at issue were ““overlay activation criterion” and “overlay activation signal”, and the DC found that “their precise meanings are not reasonably certain in view of the intra-patent inconsistencies”.  TVnGO argued “that a skilled artisan would understand the disputed phrases by stitching together their constituent words” from the specification (e.g., (“the terms – “overlay,” “activation,” “criterion,” and “signal” – are each easily understood, plain English words”, “overlay has a meaning, criterion has a meaning, signal has a meaning, activation has a meaning”).  The FC panel was “unpersuaded that the ordinary meanings of the constituent words alone are enough in the context of this case to establish what these phrases mean” and that there is no other clarifying evidence (e.g., “[n]either phrase is mentioned, let alone defined, in the shared specification, as both were added to the claims during prosecution”, “‘limited information’ provided by the prosecution history isn’t enough to provide reasonable certainty here either”, “unconvinced that the disputed phrases ‘are far from indefinite’ merely because they were ‘added to the claims, discussed, understood and considered by the Examiner, and ultimately allowed’” (Sonix Tech., FC 2017), “the specification’s use of the words ‘activates’ and ‘activating’ injects further uncertainty”, “[h]ere, a person of ordinary skill would encounter two claim phrases without an ordinary meaning in the art” (Teva, FC 2015; Infinity Computer, FC 2021), “inconsistency between the independent and dependent claims… [t]he issue is not breadth of the dependent claims but their use of the disputed phrase in a way that contradicts the independent claims”).   The DC decision was therefore affirmed.

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