Terms of Degree are Not Inherently Indefinite: Federal Circuit | Practical Law

Terms of Degree are Not Inherently Indefinite: Federal Circuit | Practical Law

In Interval Licensing LLC v. AOL, Inc., the US Court of Appeals for the Federal Circuit applied the new  indefiniteness standard and noted that terms of degree are not inherently indefinite yet held that the phrase "unobtrusive manner"  in claims directed to an attention manager for occupying the peripheral attention of a person near a display device, such as a computer monitor, were indefinite and therefore invalid under 35 U.S.C. § 112, ¶ 2.

Terms of Degree are Not Inherently Indefinite: Federal Circuit

Practical Law Legal Update 6-580-9526 (Approx. 4 pages)

Terms of Degree are Not Inherently Indefinite: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 12 Sep 2014 • USA (National/Federal)
In Interval Licensing LLC v. AOL, Inc., the US Court of Appeals for the Federal Circuit applied the new indefiniteness standard and noted that terms of degree are not inherently indefinite yet held that the phrase "unobtrusive manner" in claims directed to an attention manager for occupying the peripheral attention of a person near a display device, such as a computer monitor, were indefinite and therefore invalid under 35 U.S.C. § 112, ¶ 2.
On September 10, 2014, in Interval Licensing LLC v. AOL, Inc., the US Court of Appeals for the Federal Circuit affirmed the US District Court for the Western District of Washington's judgment of invalidity of certain of Interva Licensing LLCl's patent claims as indefinite under 35 U.S.C. § 112, ¶ 2 (No. 2013-1282, -1283, -1284, -1285, (Fed. Cir. Sept. 10, 2014)).
The Federal Circuit applied the indefiniteness standard recently articulated by the US Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. and noted that terms of degree are not inherently indefinite (No. 13-369, (S. Ct. June 2, 2014)). In this case, the Federal Circuit agreed with the district court's conclusion that claims including the term "in an unobtrusive manner" are indefinite. However, the Federal Circuit disagreed with certain of the district court's claim constructions and therefore vacated the district court's judgments of non-infringement and remanded the case to the district court.
On August 27, 2010, Interval sued AOL, Inc., Apple Inc., Google., Inc. and Yahoo! Inc. (Defendants) alleging that Defendants' products and software using pop-up notifications to present information to users infringed four of Interval's patents. The patents are directed to 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. Interval sued on four patents, two of which are:
Twenty-one of the 25 claims Interval asserted in the '652 patent and '314 patent contained or depended on the phrase "in an unobtrusive manner that does not distract a user."
On February 28, 2013, the district court determined that the terms "in an unobtrusive manner" and "does not distract a user, whether used together or separately" are indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(2)). The district court also construed several disputed claim terms. Based on the claim construction order and the parties' stipulation, the district court issued a final judgment that:
  • 21 claims in both patents were invalid as indefinite.
  • The Defendants did not infringe claims 15-18 of the '652 patent.
After Interval argued its appeal to the Federal Circuit, the Supreme Court issued its opinion in Nautilus, Inc. v. Biosig Instruments, Inc., which defined a new standard for determining whether a patent is invalid for indefiniteness. Under Nautilus, a claim is invalid for indefiniteness if it fails to inform a person skilled in the art of the invention's scope when read in light of the specification and prosecution history. For more information on Nautilus, see Legal Update, Supreme Court Rejects Federal Circuit's Insolubly Ambiguous Indefiniteness Standard.
The Federal Circuit cited Nautilus and noted that claim terms:
  • Of degree are not inherently indefinite.
  • Do not require absolute or mathematical precision but must do more than merely:
    • identify some standard for measuring the scope of the term; or
    • allow the court to be capable of ascribing some meaning to the claim.
To meet the standard set out in Nautilus, the claims when read in light of the specification and the prosecution history must provide objective boundaries for those of skill in the art. In this case, the Federal Circuit concluded that the phrase "in an unobtrusive manner" is indefinite because:
  • The "unobtrusive manner" phrase was highly subjective and, on its face, provided little guidance to one of skill in the art and lacked any objective indication of the manner in which content images are to be displayed to the user.
  • The written description lacked sufficient guidance as to whether the "unobtrusive manner" is limited by time or location on the display.
  • The prosecution history demonstrated that:
    • Interval relied on a different meaning for that term during prosecution than what it advanced during the litigation; and
    • the US Patent and Trademark Office expressed different understandings of the term during reexaminations of the '652 and '314 patents.
Although Interval argued that the Federal Circuit should at least limit the "unobtrusive manner" term to a particular example provided in the specification, the Federal Circuit refused to do so because it determined that the example was not framed as an exclusive definition but a single example. According to the Federal Circuit, a single example would still leave a person of ordinary skill in the art wondering what other forms of display are unobtrusive or non-distracting.