Latest Federal Court Case, 1/31/22
Nature Simulation Systems Inc. v. Autodesk, Inc., Appeal No. 2020-2257 (Fed. Cir. Jan. 27, 2022)
In its only precedential patent decision this week, the Court of Appeals for the Federal Circuit corrected what it considered to be an incorrect standard for claim indefiniteness applied by the U.S. District Court for the Northern District of California. In doing so, the Federal Circuit reversed the lower court’s holding that claims of Nature Simulation Systems, Inc.’s (NSS’) 10,120,961 and 10,109,105 patents were indefinite.
The lower court declared the claims indefinite because there were “unanswered questions” contained in them. The Federal Circuit rejected the lower court’s position that all questions must be answered within the claim language, explaining that a claim is viewed and understood not solely on what is in the claim language but on the context of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. After rejecting the lower court’s “unanswered questions” standard, the Federal Circuit remanded the case for further proceedings.
NSS’ patents are for data structures and algorithms for a claimed method, which is described as a modification of the Watson method. The Watson method is a known Boolean operation published in 1981 for analyzing and representing three-dimensional geometric shapes.
At a Markman hearing, defendant-appellee Autodesk, Inc. (Autodesk) requested construction of various terms within the ’961 patent, including “searching neighboring triangles of the last triangle pair that holds the last intersection point” and “modified Watson method.” NSS argued the challenged terms did not require construction, are clearly set forth in the specification, and should receive their ordinary meaning in the relevant field. The Watson method is cited as prior art in the ’961 and ’105 patents.
For the “searching neighboring triangles” term, the lower court recited three unanswered questions from the claim language: (1) whether the phrase requires searching repeatedly or iteratively or merely once; (2) what the “last triangle pair” or “last intersection point” is; and (3) how one can “extend an intersection line” when in some cases it is not possible. For the term “modified Watson method,” the lower court recited four unanswered questions from the claim language. (1) What is a neighboring point of intersection (referred to as PET in the patents)? (2) What is the meaning of an “identical” point of intersection? (3) What is the meaning of removing a point of intersection? (4) From what is the point of intersection being removed? The lower court explained that all these questions must be answered in “the claim language, standing alone”; otherwise, the claim is indefinite under 35 U.S.C. § 112.
The Federal Circuit explained that “‘Claim language, standing alone’ is not the correct standard of law, and is contrary to uniform precedent.” While 112(a) requires the specification “describe the invention in full, clear, concise, and exact terms,” a claim is viewed and understood, not solely on what is written in the claim, but in the context of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art. The Court relied on Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc), and Nautilus, Inc. v. Biosig Instruments, Inc. 572 U.S. 898, 909 (2014) for these principles.
The Federal Circuit criticized the lower court for misunderstanding the purpose of claim language, noting that “[t]he function of the claims is not to duplicate the specification” but rather:
(a) to point out what the invention is in such a way as to distinguish it from what was previously known, i.e., from the prior art; and (b) to define the scope of protection afforded by the patent. In both of those aspects, claims are not technical descriptions of the disclosed inventions but are legal documents like the descriptions of lands by metes and bounds in a deed which define the area conveyed but do not describe the land.
(Citing In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985).)
The Federal Circuit explained that claims define and circumscribe to allow the public to know what is and is not still open to them; the written description discloses and teaches. While claim language must “inform those skilled in the art about the scope of the invention with reasonable certainty,” the definiteness requirement “recogniz[es] that absolute precision is unattainable.” Furthermore, claim language is interpreted in the context of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.
The Federal Circuit simply explained that the claim language did not need to contain the exact description, or, in other words, the “[s]pecifications teach. Claims claim.”
The Federal Circuit then turned to the prosecution history and criticized the lower court for failing to give appropriate deference to the PTO examiner’s analysis and to a resulting amendment that was made to overcome an indefiniteness objection. Given that Examiners are deemed to be experienced in the relevant technology, the Court presumed that an Examiner would not introduce an indefinite term into a claim. Tinnus Enters., LLC v. Telebrands Corp., 733 F. App’x 1011, 1020 (Fed. Cir. 2018).
Ultimately, the Federal Circuit held that indefiniteness was not established as a matter of law, reversed the lower court’s decision, and remanded for further proceedings.
Judge Dyk dissented. He questioned the assumption that a PTO examiner could never introduce indefinite language. He also faulted the majority for its handling of limitations that appear in the challenged claims but are not defined in the specification or otherwise. Judge Dyk did not contest the majority’s position that “[a]ctions by PTO examiners are entitled to appropriate deference” because examiners are “deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.” However, Judge Dyk’s dissent implied that even if a PTO examiner is considered experienced in the relevant technology, it does not mean that a claim approved by a PTO examiner is sufficiently defined.
The opinion can be found here.
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