DC indefiniteness finding vacated and remanded, while “means”-related claim construction finding affirmed, each based on the intrinsic evidence

Grace Instrument Industries, LLC v. Chandler Instruments Co., LLC and Ametek, Inc.

Docket No. 2021-2370 (https://cafc.uscourts.gov/opinions-orders/21-2370.OPINION.1-12-2023_2062188.pdf)


January 12, 2023

Brief Summary:   DC indefiniteness determination of “enlarged chamber” vacated and remanded while construction of “means for driving” a rotor limitation affirmed.

Summary:  Grace appealed a DC claim construction order the found the term “enlarged chamber” indefinite and its construction of “means for driving said rotor to rotate located in at least one bottom section” of US 7,412,877 relating to pressurized devices and viscometers for oil well drilling rigs.  As a result of the DC findings, the parties stipulated to the invalidity of certain asserted claims and non-infringement of certain others. 

The DC found “that ‘enlarged’ is a ‘term of degree’ that ‘necessarily calls for some comparison against some baseline’” (quoting Liberty Ammunition, Inc. v. United States, 835 F.3d 1388, 1395 (Fed. Cir. 2016)), and that “the ’877 patent ‘does not provide the requisite objective boundaries’ for a skilled artisan” (disagreeing with Grace “that ‘enlarged chamber’ could be defined by its purpose, finding that ‘explaining that something is large enough to do a certain task does not answer the question: larger than what?’” and “that the baseline for ‘enlarged’ is the prior art, explaining that ‘this is not evident from the ’877 Patent itself’”).  The FC panel explained that “[t]he ’877 patent’s specification guides us to the term’s meaning” and found that “a skilled artisan would ascertain [from] the intrinsic record” that the chamber “must be large enough to accomplish a particular function” (Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“the specification is the ‘single best guide to the meaning of a disputed term’”); Cont’l Cirs. LLC v. Intel Corp., 915 F.3d 788, 795 (Fed. Cir. 2019) (“claims, specification, and prosecution history”); Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014) (“reasonable certainty”); Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (“inferred from clear limiting descriptions of the invention in the specification or prosecution history”); Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374 (Fed. Cir. 2015) (“a skilled artisan would understand the inherent parameters” from “the intrinsic evidence”)).

The DC also construed the “means for” limitation to be a “means for driving said rotor to rotate located in at least one bottom section.”  The parties agreed with the “driving said rotor to rotate” portion but “disputed the means and whether the phrase ‘located in at least one bottom section’ modifies ‘rotor,’ as Grace contended, or ‘means for driving,’ as Chandler argued.”  The DC agreed with Chandler since Grace’s proposal “(1) was ‘not broad enough to include magnetic coupling’ as it must because of dependent claim 14 and (2) would exclude other terms described in the patent as causing the rotor to rotate” and “‘located in at least one bottom section’ modifies ‘means for driving,’ not ‘rotor’” (“‘conform[s] with [the] usual rules of grammar and sentence structure’ and is confirmed by limitation 4(b)”).  The FC panel found the DC’s construction to be “consistent with the specification” (citing NOMOS Corp. v. BrainLAB USA, Inc., 357 F.3d 1364, 1367–68 (Fed. Cir. 2004)) and therefore affirmed its determination.

This entry was posted in Claim Construction, Indefiniteness, Means-plus-function. Bookmark the permalink.

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