Fresh From the Bench: Recent Patent Cases From the Federal Circuit
Interval –In its first application of the Supreme Court's Nautilus v. Biosig decision, the Circuit rules that the phrase "unobtrusive manner that does not distract a user," in reference to the manner in which an attention manager displays images, fails to inform those skilled in the art about the scope of the invention with reasonable certainty, and the Circuit therefore affirms the district court's judgment of invalidity under § 112, ¶ 2.
Scientific Plastic– A majority of the panel affirms a determination of obviousness, holding that the Board did not err in holding that it would have been obvious to modify a chromatography cartridge with the resealable threaded cap taught by art that the majority found to be analogous.
Interval Licensing, LLC v. AOL, Inc. and Apple, Inc. and Google, Inc. and Yahoo! Inc., Fed. Cir. Case 2013-1282-85 (September 10, 2014)
The patents in suit are directed to an "attention manager for occupying the peripheral attention of a person in the vicinity of a display device." The patents describe a system that acquires data from a content provider, schedules the display of the content data, generates images from the content data, and then displays the images on a device. The primary issues raised on appeal center on the manner in which the patented invention displays content data—specifically, how the attention manager displays "images" so as to attract the peripheral attention of the user.
Interval sued the defendants, alleging infringement of four patents, including the '652 and '314 patents. Interval's suit alleged that defendants infringe the patents through software that uses "pop-up" notifications to present information. Two of the defendants filed a request for ex parte reexamination of the '652 patent, while another defendant filed a request for inter partes reexamination of the '314 patent. The district court stayed the litigation pending PTO reexamination. When the PTO found the asserted claims of both patents to be patentable despite the new prior art, the district court lifted the stay and proceeded with the litigation.
A patent must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention." 35 U.S.C. §112, ¶ 2. A claim fails to satisfy this statutory requirement and is thus invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, "fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
The Nautilus opinion explained that the statute's definiteness requirement calls for a delicate balance, allowing for a modicum of uncertainty to provide incentives for innovation, but must also require clear notice of what is claimed, thereby apprising the public of what is still open to them. What the statute requires is that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.
The key claim language at issue in this appeal includes a term of degree, "unobtrusive manner." The panel does not understand the Supreme Court to have implied in Nautilus, and it does not hold today, that terms of degree are inherently indefinite. Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. As the Supreme Court recognized in Nautilus, absolute precision in claim language is unattainable. Although absolute or mathematical precision is not required, it is not enough, as some of the language in prior cases may have suggested, to identify some standard for measuring the scope of the phrase. The Supreme Court explained that a patent does not satisfy the definiteness requirement of §112 merely because a court can ascribe some meaning to a patent's claims. The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.
The patents' "unobtrusive manner" phrase is highly subjective and, on its face, provides little guidance to one of skill in the art. The lack of objective boundaries in the claim language is particularly troubling in light of the patents' command to read the term "image" broadly to mean any sensory stimulus that is produced from the set of content data, including sounds and video. The patents contemplate a variety of stimuli that could impact different users in different ways. A term of degree fails to provide sufficient notice of its scope if it depends on the unpredictable vagaries of any one person's opinion. Where, as here, there is a purely subjective claim phrase, the panel says to turn to the written description for guidance.
Although Interval identifies portions of the specification that appear to use the "unobtrusive manner" phrase in conjunction with the wallpaper embodiment, other portions of the specification suggest that the phrase may also be tied to the screen saver embodiment. The hazy relationship between the claims and the written description fails to provide the clarity that the subjective claim language needs.
The prosecution history further illustrates the difficulty in pinning down the relationship between the written description and the "in an unobtrusive manner that does not distract the user" claim phrase. The statements of Interval, and the responses of the PTO, reflect considerable uncertainty about which embodiments were tied to the "unobtrusive manner" language.
After reviewing the specification and prosecution history, the panel concludes that the "unobtrusive manner" phrase has too uncertain a relationship to the patents' embodiments. Contrary to Interval's suggestion, the wallpaper embodiment does not provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary.
In the alternative, Interval suggests that if the panel is not persuaded that the wallpaper embodiment defines the "unobtrusive manner" phrase, then it must at least adopt a "narrow example" from the specification. That example lies in the Summary, which explains that information can be presented "in an unobtrusive manner that does not distract the user from the primary interaction with the apparatus (e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus)."
The panel concedes that a patent which defines a claim phrase through examples may satisfy the definiteness requirement, but it declines to "cull out a single ‘e.g.' phrase from a lengthy written description to serve as the exclusive definition of a facially subjective claim term." See Nautilus, 134 S. Ct. at 2130 (disfavoring "post hoc" efforts to "ascribe some meaning to a patent's claims"). Had the phrase been cast as a definition instead of as an example—if the phrase had been preceded by "i.e." instead of "e.g."—then it would help provide the clarity that the specification lacks. The specification offers no indication, thus leaving the skilled artisan to consult the "unpredictable vagaries of any one person's opinion." Such ambiguity falls within the innovation-discouraging "zone of uncertainty" against which the Supreme Court has warned.
In sum, the panel holds that the "unobtrusive manner that does not distract a user" phrase, when viewed in light of the specification and prosecution history, fails to inform those skilled in the art about the scope of the invention with reasonable certainty. The claims that depend on that phrase are thus invalid for indefiniteness.
Turning to claim construction, the panel modifies the district court's construction of "attention manager" and "instructions" and therefore vacates and remands the judgment of noninfringement.
Nautilus was highly critical of the Circuit's "insolubly ambiguous" standard as to indefiniteness, but did not appear to provide clear guidance as to the standard that should be applied. Here, at least this panel appears to understand that the bar has been raised and the Circuit needs to apply a higher standard of claim certainty, whatever that standard is.
Scientific Plastic Products, Inc. v. Biotage AB, Fed. Cir. Case 2013-1219, -1220, -1221 (September 10, 2014)
SPP is the owner of the three patents that relate to a resealable cartridge for low pressure liquid chromatography (LPLC). After SPP filed suit against Biotage for patent infringement, Biotage requested inter partes reexamination of the three patents, and the district court stayed the litigation. The patent examiner rejected all claims of the three patents based on obviousness, and the Board affirmed the rejections.
Claim 1 of the '327 patent is the broadest cartridge claim:
1. A low pressure liquid chromatographic cartridge having a longitudinal axis, comprising:
a tubular polymer container adapted to receive a chromatographic packing material, the
container having an outlet port located at a downstream end of the container and configured for connecting to chromatographic equipment during use of the cartridge, the container having container threads formed on an upstream end of the container and a lip defining an opening to the container with an inward facing inclined sealing surface adjacent the lip and facing the longitudinal axis;
a polymer cap having an inlet port located on an upstream end of the container, the port being configured for connecting to chromatographic equipment during use of the cartridge, the cap having cap threads located on a skirt of the cap to threadingly engage the container threads;
an annular sealing flange depending from the cap and located radially closer to the longitudinal axis than the skirt, the flange having an outward-facing inclined sealing surface facing away from the axis with an upstream end of the flange being further from the axis than a downstream distal end of the flange; the outward-facing inclined surface on the flange generally aligned with and located to abut the inward-facing inclined surface on the container to form a resilient fluid tight seal between the cap and container suitable for use in low pressure liquid chromatography when the cap is screwed onto the container.
The primary issue on reexamination concerned the obviousness of combining the LPLC cartridge of the Yamada reference with the King or Strassheimer pressure-resistant caps. The examiner found that Yamada discloses all of the features of the SPP cartridge except for the complementary inclined sealing surfaces of the cap and the lip of the container.
King relates to improved seals for container closure assemblies, and is "especially applicable to the sealing of
containers in substantially gas-tight and liquid-tight fashion, such as the sealing of . . . beverage containers."
King shows a container closure assembly with a threaded polymer cap that ensures a fluid tight seal. The examiner found that King shows sealing surfaces that have oppositely-inclined surfaces with respect to the cap and lip of the container, as in the SPP closure.
Strassheimer relates to plastic bottles and closures therefor that are especially useful for carbonated beverages.
Strassheimer also shows a plastic threaded cap that ensures a fluid-tight seal even after repeated use. The examiner found that Strassheimer shows a taper on the lip of the plastic container that corresponds to a taper on the cap, as in the SPP closure.
Are King and Strassheimer Analogous Prior Art?
The parties disagree on whether King and Strassheimer are analogous art that should be considered in the obviousness inquiry.. Criteria for determining whether prior art is analogous may be summarized as (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. As to when a reference is reasonably pertinent to the problem:
"A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection." Innovention Toys, LLC v. MGA Entm't, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
Here, the King and Strassheimer references address the problem of providing a fluid-tight seal at elevated pressures, between a container and a resealable cap. According to the majority, this is sufficiently close to the problem addressed by the claimed invention, and substantial evidence supports the Board's finding that King and Strassheimer are available as prior art.
Was the Claimed Invention Obvious?
The question remains as to whether combining the cartridge of Yamada with the pressure-resistant cap of King or Strassheimer would have been obvious to a person of ordinary skill in the field of liquid chromatography devices. In KSR, the Supreme Court explained:
"[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does."
The issue here is not whether the Yamada cartridge leaked, but whether there was a concern with leakage in LPLC cartridges such that a person of ordinary skill would have provided a known pressure-resistant cap, as in King or Strassheimer, to the cartridge of Yamada. The majority concludes that substantial evidence supports a finding that there was such a concern, and goes on to hold that the Board did not err in holding that it would have been obvious for a person of ordinary skill in the field of the invention to modify the chromatography cartridge of Yamada with the resealable threaded cap of King or Strassheimer.
Judge Moore dissents, feeling that the Board and the majority is exercising hindsight, and that the record does not contain substantial evidence that one of skill in the relevant art would have modified the chromatography cartridge in Yamada by replacing its sealing configuration with that of a soda pop bottle. She also notes that the Board found the claims obvious without resolving the level of skill in the art. It is axiomatic that this is a "basic factual inquiry" required of any obviousness determination. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). According to Judge Moore, we cannot answer the analogous art question without knowing who the person of ordinary skill is.