Thursday, January 24, 2013

Inescapably indefinite under 112 P 2

Readers interested in a patent case involving non-technical matter should view
Ernie Ball v. Earvana . A relevant claim is to a nut:

A compensated nut for a stringed instrument, the stringed instrument having one or more strings, a body and a neck, the nut comprising (...)

The patentee got a bad outcome (invalidity) but no one associated with this case fared well.

35 USC 112 P 2 is at stake:

While Earvana has not specifically pointed to the definiteness requirement of § 112, ¶ 2, it did challenge the asserted claims as invalid under § 112 in the district court, and it maintains that assertion on appeal. The definiteness requirement “is drawn from the court’s performance of its duty as the construer of patent claims.” Atmel Corp. v. Info. Storage Devices, 198 F.3d 1374, 1378 (Fed. Cir. 1999); see also Eplus, Inc. v. Lawson Software, Inc., 700 F.3d 509 (Fed. Cir. 2012) (“[I]ndefiniteness is a question of law and in effect part of claim construction.”). “The reviewing tribunal must determine whether a person experienced in the field of the invention would under- stand the scope of the claim when read in light of the specification.” Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1369 (Fed. Cir. 2006). We there- fore address definiteness as a pure legal question where, as here, in discharging our “duty as the construer of patent claims” we reach the inescapable conclusion that the claims at issue cannot satisfy the definiteness standard.

The following drafting caught the attention of IPBiz:

As is black letter law, the claims define the exclusive rights conferred by a patent, and the validity and infringement of those rights must be evaluated on a claim by claim basis. E.g.,, Inc. v., Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc).

Separately, note

Before the district court, Earvana consistently argued that “the ’264 patent is invalid” pursuant to §§ 102, 103, and 112. Unfortunately, the dialogue on validity essentially ended there. The parties’ submissions never evolved beyond the most barren generalities, characterized by cursory recitations of statutory bases for invalidity and untethered debate about the LoJacono reference. As a result, the arguments on both sides lacked fundamental details at every turn—for example, which claims were challenged under each section, which limitations of those claims were in dispute, and which specific provisions of § 112 were at issue, to name a few—leaving the district
court to guess at which of many possible validity issues were material to resolving the dispute.
The parties’ lack of focus, not surprisingly, is reflected in the district court’s judgment on invalidity; its entire analysis spans only a single paragraph:

Defendant’s invalidity counterclaim is premised upon its contention that [LoJacono] and ’264 pa- tent disclose the same invention, and because the [LoJacono] patent was issued first, the ’264 patent should be invalidated for anticipation and obvi- ousness pursuant to 35 U.S.C. § 102, 103, 112. However, as previously discussed in the Court’s claim construction of “sinusoidal configuration,” [LoJacono] and the ’264 patent are distinct and cover different subject matter. [LoJacono’s] speci- fication and claims are limited to a guitar nut whose intonation portions have a defined sinusoi- dal configuration while the ’264 patent’s intona- tion portions do not form a sinusoidal arc. The Court therefore does not find Plaintiff’s ’264 pa- tent to be invalid for anticipation or obviousness.

Summary Judgment, slip op. at 16. Notably, the district court’s discussion fails even to address § 112, much less analyze the validity of any claim in view of that section’s multiple substantive requirements. Given the uncomplicated subject matter of the instant patent and the prior art patent, however, it is clear from the record that the asserted claims fail the definiteness requirement of § 112, ¶ 2.


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