Precedential Patent Cases From the Federal Circuit in the Past Week
Eidos – Despite applying the "reasonable certainty" standard to be accorded definiteness under Nautilus, which we thought might make it easier to invalidate patent claims, the Circuit reverses a summary judgment of invalidity granted by the E. D. of Texas, which applied the prior "insolubly ambiguous" standard. The decision is based on the panel's determination that the claim, when read in light of the specification and prosecution history, informed those skilled in the art at the time the patent was filed about the scope of the claimed invention.
Eidos Display LLC et al. v. Au Optronics Corp. , et al., Fed. Cir. Case 2014-1254 (March 10, 2015)
The patent in suit is directed to manufacturing processes for an electro-optical device, such as a liquid crystal display (LCD). The specification contains 17 embodiments, each embodiment describing a manufacturing process that reduces the number of photolithographic steps in creating an LCD panel. Each embodiment is broken down into a series of "forming" steps that deposit material, such as metal, insulator, or passivation material, on the substrate or previous layers, as well as a series of "photolithographic" steps that etch or remove portions of previously-formed material.
The circuitry in the LCD devices formed by the patented processes is the same as circuitry formed in prior art processes. The source wiring is connected to a signal supply circuit to provide image data, and the gate wiring is connected to a scanning circuit to provide control signals. Important to this appeal, the electrical connection between a source wire and the signal supply circuit is called a source wiring connection terminal. The electrical connection between a gate wire and the scanning circuit is called a gate wiring connection terminal. In an LCD panel, there are many individual source and gate wires, each with a connection terminal located at the end of the wire. During the relevant LCD manufacturing process, a non-conductive passivation film is formed on top of the wiring and connection terminals. The passivation film is then etched away to allow the scanning and signal supply circuits to connect to the terminals. The only industry practice for this manufacturing process at the time of the patent was to create individual holes, referred to as "contact holes," through the passivation film to each connection terminal. While a single contact hole shared by all the connection terminals may have been technically possible, the parties did not present any teaching where such a contact hole was ever created.
During Markman proceedings the claim construction dispute focused on "a contact hole for source wiring and gate wiring connection terminals." The magistrate judge reviewed the claim language, specification, and the record in the then-ongoing ex parte reexamination, and determined that the dispute was not ripe for claim construction, as the dispute centered around theories of invalidity under § 112. Applying the pre- Nautilus "insolubly ambiguous" standard of indefiniteness (the Supreme Court had not yet rendered its Nautilus decision), the magistrate recommended and the court agreed to grant one of the defendants' motion for summary judgment of indefiniteness because "the Court is unable to arrive at a construction that would allow a person of ordinary skill in the art to determine what is claimed when the claim is read in light of the specification."
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 (2006). Keeping in mind that "patents are not addressed to lawyers, or even to the public generally, but rather to those skilled in the relevant art," the patent claims "must be precise enough to afford clear notice of what is claimed, thereby apprising the public of what is still open to them." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). 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 prosecution history, "fails to inform, with reasonable certainty, those skilled in the art at the time the patent was filed about the scope of the invention." Id.
The Standard of Review
A grant of summary judgment of indefiniteness is reviewed de novo. Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309 (Fed. Cir. 1998). The court's ultimate indefiniteness determination is also reviewed de novo. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014). The indefiniteness inquiry here is intertwined with claim construction, which, because the meaning of the claim at issue is clear in view of the intrinsic record and undisputed facts, we also review de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015). To the extent the court considered extrinsic evidence in its claim construction order or summary judgment order, that evidence is ultimately immaterial to the outcome because the intrinsic record is clear. We reverse the district court's finding of indefiniteness because Eidos' proposed construction for the disputed limitation reflects how a person of ordinary skill in the art at the time of the invention would have understood the limitation after reading the intrinsic record.
The Meaning of the Limitation at Issue can be determined with Reasonable Certainty
The limitation at issue, "a contact hole for source wiring and gate wiring connection terminals," by itself, might suggest to someone unknowledgeable in the field of LCD manufacturing that one contact hole is formed for all the source wiring connection terminals and gate wiring connection terminals. But the limitation, by itself, might also indicate that many contact holes are formed for the connection terminals. To analogize, a person familiar with cars, when reading the sentence "I am going to create an electric car for the United States and United Kingdom," would likely expect different electric cars to be created, one set with the steering wheel located on the left for driving in the United States, and another set with the steering wheel on the right for driving in the United Kingdom. The intrinsic record here makes sufficiently clear that a person of ordinary skill in the art—someone with knowledge of LCD manufacturing—after considering the limitation "in the context of the particular claim in which the disputed term appears, and in the context of the entire patent, including the specification," would understand the limitation-at issue to call for separate, different contact holes for the source wiring connection terminals and gate wiring connection terminals, rather than one shared contact hole.
No party disputes that the state of the art for manufacturing LCD panels always had been to form contact holes for source wiring connection terminals that are separate from contact holes for gate wiring connection terminals. Consistent with that well established practice, the specification teaches that each connection terminal for the electro-optical device would receive its own contact hole, for two reasons.
First, nothing in the '958 patent describes how a person of ordinary skill in the art would deviate from the known industry practice to create a novel shared contact hole for all the connection terminals. Second, the only description corresponding to "a contact hole for source wiring and gate wiring connection terminals" in the specification teaches that separate contact holes are formed for the different connection terminals. This teaching is evident when considering the history of the '958 patent, in particular the patent application to which the '958 patent claims priority, application number 08/459,925. The specification in the '925 application, which is substantially the same as the specification in the '958 patent, contains seventeen embodiments that match with and describe the seventeen original independent claims. The limitation-at-issue, "a contact hole for source wiring and gate wiring connection terminals," appeared in five of the original claims. Original claim 8 ultimately became claim 1 of the patent before us—the '958 patent. Although the portion of the specification describing embodiment G does not explain in detail this particular photolithographic step, the portion describing embodiment D, which claims this step using identical claim language, explicitly describes this photolithographic step as forming "a contact hole for a source wiring connection terminal and a contact hole for a gate wiring connection terminal."
Even without considering the priority application, the specification makes clear that the limitation-at-issue requires formation of separate contact holes. Again, with respect to embodiment D, the specification, at one point, describes "a fourth photolithographic step D8 of patterning the passivation film to remove a portion of the passivation film, . . . forming a contact hole for source wiring and gate wiring connection terminals." And, as already stated, the specification later clarifies that "photolithographic step D8" entails forming "a contact hole for a source wiring connection terminal and a contact hole for a gate wiring connection terminal." The specification thus equates the limitation-at-issue with forming separate contact holes for the source wiring connection terminal and the gate wiring connection terminal. Nothing in the specification suggests why the identical phrase recited in the claimed "fourth photolithographic step G8" should be read differently from the described "fourth photolithographic step D8." Instead, a person of ordinary skill in the art would understand that the phrase, "a contact hole for source wiring and gate wiring connection terminals," when used repeatedly throughout the patent, would be given a consistent meaning.
Finally, Display Manufacturers argue that permitting separate contact holes to be covered by the limitation "a contact hole for source wiring and gate wiring connection terminals" would require rewriting the limitation, which is impermissible except in certain situations. Determining how a person of ordinary skill in the art would understand the limitation, however, is different from rewriting the limitation. Here, because a person of ordinary skill in the art would understand that the limitation "a contact hole for source wiring and gate wiring connection terminals" means separate contact holes for source wiring connection terminals and gate wiring connection terminals, adopting such a construction is not rewriting the claim limitation.
Comments: The case is significant in that it suggests that neither Nautilus nor Teva will change things as much as we thought they might. Specifically, the panel found that the language at issue passed muster under the Nautilus test that requires claim language to be capable of being understood with "reasonable certainty" by one in the art. Had the "insolubly ambiguous" standard been applied, which made it more difficult to establish invalidity, the same result would obviously have been reached. This is, incidentally, the first reversal of a finding of indefiniteness since Nautilus was decided. The post -Nautilus Interval Licensing case cited in the opinion simply affirmed a finding of invalidity based upon indefiniteness.
In applying Teva, the panel didn't ask whether the district court relied on extrinsic evidence in its claim construction, which would have required deference to the lower court's construction. Instead, the panel applied the de novo review standard, noting that to the extent the court relied on extrinsic evidence, that evidence was ultimately immaterial to the outcome since the intrinsic evidence was clear. This is consistent with the Circuit's post- Teva claim construction in Fenner Investments, Ltd. v. Cellco Parnership, Fed. Cir. Case 2013-1640 (February 12, 2015), and suggests that the Circuit is going to be ignoring district court reliance on extrinsic evidence if that evidence is not material to the Circuit's claim construction analysis.