Enzo/Yale get a reprieve from the CAFC

The CAFC decided that claims of U.S. Patents No. 5,328,824 and 5,449,767 were not indefinite. In 2007, Applera had tried a summary judgment motion as to lack of written description and enablement, which was denied, but the motion was granted as to
indefiniteness and anticipation.

Of the law on indefiniteness: “A determination that a patent claim is invalid for failing to meet the definiteness
requirement in 35 U.S.C. § 112, ¶ 2 is a legal question reviewed de novo.” Young v.
Lumenis, Inc., 492 F.3d 1336, 1344 (Fed. Cir. 2007).

The CAFC noted that assertions of indefiniteness and anticipation are either / or propositions: As a preliminary matter, we observe that a claim cannot be both indefinite and anticipated. (...) If a claim is indefinite, the claim, by definition, cannot be
construed. Without a discernable claim construction, an anticipation analysis cannot be
performed. See Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1342 (Fed.
Cir. 2003) (vacating finding of infringement entered after claims were properly held to be
indefinite).

At issue was the text "not intefering substantially"--> On appeal, Enzo first argues that the district court incorrectly determined that the “not interfering substantially” language in the ’824, ’767, and ’928 patents is indefinite. Applera's position was nothing in the patents explains how to measure “interference” or how to determine whether it is “substantial.”

Of the relevant law: “Indefiniteness requires a
determination whether those skilled in the art would understand what is claimed. To
make that determination, we have explained that ‘[i]n the face of an allegation of
indefiniteness, general principles of claim construction apply.’” Young, 492 F.3d at 1346
(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir.
2005)). “In that regard, claim construction involves consideration of primarily the
intrinsic evidence, viz., the claim language, the specification, and the prosecution
history.” Id. When a “word of degree” is used, the court must determine whether the
patent provides “some standard for measuring that degree.” Seattle Box Co., Inc. v.
Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Similarly, when a
claim limitation is defined in “purely functional terms,” a determination of whether the
limitation is sufficiently definite is “highly dependent on context (e.g., the disclosure in
the specification and the knowledge of a person of ordinary skill in the relevant art
area).” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008).

Why Enzo wins: The word “substantially,” when used
in a claim, can denote either language of approximation or language of magnitude. See
Deering Precision Instruments, LLC v. Vector Distrib. Sys., Inc., 347 F.3d 1314, 1323
(Fed. Cir. 2003). As used in the phrase “not interfering substantially,” the word
“substantially” denotes language of magnitude because it purports to describe how
much interference can occur during hybridization, i.e., an insubstantial amount of
interference. See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022,
1031 (Fed. Cir. 2002) (“[T]he phrase ‘substantially below’ signifies language of
magnitude, i.e., not insubstantial.”). The claims in this case provide at least some
guidance as to how much interference will be tolerated.

The Exxon case on indefiniteness appears in a footnote:

Of course, if this
particular embodiment is inoperable, because a linkage
group having the structure –CH=CH–CH2–NH– entirely precludes hybridization, then
the basis for invalidity would be a lack of enablement, not indefiniteness. Exxon
Research & Eng’g Co. v. United States, 265 F.3d 1371, 1382 (Fed. Cir. 2001) (stating
that inoperable embodiments present “an issue of enablement, and not indefiniteness”);
Miles Labs., Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (“The invention’s
operability may say nothing about a skilled artisan’s understanding of the bounds of the
claim.”).

and in a string cite:

the claims are not indefinite
even though the construction of the term “not interfering substantially” defines the term
without reference to a precise numerical measurement, see Young, 492 F.3d at 1346
(holding that a word of degree was definite, even without a numerical claim
construction); Exxon, 265 F.3d at 1381 (same); Marosi, 710 F.2d at 803 (same); In re
Mattison, 509 F.2d 563, 565 (CCPA 1975) (same).

Exxon, 265 F.3d at 1380 (stating that a “period
sufficient,” recited in the claim, can be ascertained by performing activity checks).

**Concerning anticipation on summary judgment-->

“When a motion for summary judgment is properly made and supported, an
opposing party may not rely merely on allegations or denials in its own pleading; rather,
its response must—by affidavits or as otherwise provided in this rule—set out specific
facts showing a genuine issue for trial.” Fed. R. Civ. P. 56(e)(2). The requirement that
the nonmovant must set forth “specific facts” means that “[m]ere denials or conclusory
statements are insufficient” to survive summary judgment. Barmag Barmer
Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 836 (Fed. Cir. 1984).
The standard on this issue is the same in the Second Circuit, see Davis v. New York,
316 F.3d 93, 100 (2d Cir. 2002), which applies in this case “because the issue is a
procedural matter not unique to patent law.” Arthur A. Collins, Inc. v. N. Telecom Ltd.,
216 F.3d 1042, 1048 (Fed. Cir. 2000).

Applera’s argument ignores the standard for summary judgment, which requires
that Dr. Sherman’s declaration be viewed in a light most favorable to Enzo. See
Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed. Cir. 1998)
(“In deciding whether summary judgment was appropriate, we view the evidence in a
light most favorable to the party opposing the motion with doubts resolved in favor of the
opponent.”) (internal citations omitted). Viewing the declaration in a light most favorable
to Enzo requires that Dr. Sherman’s explanation be read as limited to the specific one-
carbon aminomethyl group disclosed in Kasai and not as a sweeping condemnation of
single bonds or an unyielding requirement of double bonds.

Liebel-Flarsheim appears: “it is improper to read limitations from a preferred embodiment
described in the specification—even if it is the only embodiment—into the claims absent
a clear indication in the intrinsic record that the patentee intended the claims to be so
limited.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004).

CAFC