CAFC vacates D. Mass. in Lexington Luminance case; holding of indefiniteness reversed
Because we conclude that the district court erred in construing the
claim and in holding the claim indefinite, we vacate the
judgment of invalidity and remand.
An issue was an inartfully drafted Markush group:
We first consider the district court’s conclusion that
the claim was indefinite in its use of the phrase “said
substrate is selected from the group comprising group IIIV,
group IV, group II-VI elements and alloys, ZnO, spinel
and sapphire.” Lexington argues that the court erred in
construing the phrase as a Markush group that is not
limited to the enumerated members. According to Lexington,
the phrase means that the substrate must contain
one or more of the enumerated members.
We conclude that the district court erred in holding
the claim indefinite in reciting an open Markush group.
The issue before us on review from the district court is
whether the claim is indefinite, not whether it recites an
“improper” Markush group. A Markush group is commonly
used in certain areas of patent practice to indicate with
definiteness that a claim limitation is “selected from the
group consisting of . . . ,” meaning only those recited
members of the group. Gillette Co. v. Energizer Holdings,
Inc., 405 F.3d 1367, 1372 (Fed. Cir. 2005); Abbott Labs. v.
Baxter Pharm. Prods., Inc., 334 F.3d 1274, 1280 (Fed. Cir.
2003). It is the job of the Patent and Trademark Office to
ensure, on examination, that a claim is definite and that,
when a Markush expression is used, it is used properly.
But that is not our task in reviewing a claim that has
been held to be indefinite. Our task involves determining
the definiteness of a claim, i.e., whether the district court
erred in finding the claim to be indefinite, not evaluating
the propriety of Markush language.
Definiteness involves more than an examination of
the technical correctness of the use of a Markush expression
that may have slipped past the examining process. It
involves evaluation of the claim in light of the written
While other “improper” Markush usage in other patents
may not pass the definiteness test, depending upon
what else is in the record, the written description here
provides support for the claim to satisfy the test for definiteness
that the Supreme Court laid out in Nautilus,
that is, that the claim, in light of the specification, informs
one skilled in the art, with reasonable certainty, of
the scope of the invention. Nautilus, 134 S. Ct. at 2124.
We therefore hold that the district court erred in finding
the claim to be indefinite because of the imperfect usage
of Markush terminology.
We also note that the substrate that is described in
the contested language is not the essence of the invention
that is being claimed. The claim is particularly directed
to a textured district having trenches with a sloped etching
profile. A person skilled in the art would therefore
reasonably ascertain the scope of the invention in view of
the intrinsic record.
There was also a "lack of antecedent basis" issue:
As an additional argument for affirming the invalidity
judgment, Amazon contends that the district court erred
in not invalidating the claim for indefiniteness based on
the expression “so as to guide the extended lattice defects
away from propagating into the active layer.” The essence
of Amazon’s contention is that the word “the” has no
antecedent. We have considered Amazon’s arguments on
that point but find them unpersuasive.
claim language specifies the intended function or purpose
of the claimed structure. It thus applies wherever the
function or purpose requires. We therefore agree with the
district court that the claim is not indefinite for not specifying
“exactly how many defects [were] reduced.” Id.
Accordingly, we affirm the district court’s decision not to
invalidate the claim on that basis.
**As to "judicial economy,"
Under our precedent, we have the discretion to review
a non-dispositive claim construction in the interest of
judicial economy, if the construction may become important
on remand. Interval Licensing, 766 F.3d at 1376
(citing Deere & Co. v. Bush Hog, LLC, 603 F.3d 1349,
1357 (Fed. Cir. 2012); Advanced Software Design Corp. v.
Fiserv, Inc., 641 F.3d 1368, 1378 (Fed. Cir. 2011)). Because
we now vacate the invalidity judgment and remand
for further proceedings at the district court, we address
the claim construction issues raised by the parties
Yes, Teva v. Sandoz is cited:
In this case, we review the district court’s claim constructions
de novo, because the intrinsic record fully
determines the proper constructions and the district
court’s constructions were not based on expert testimony.
See Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. __,
135 S. Ct. 831, 840–42 (2015). A patent is a fully integrated
written instrument and the claims must be read in
view of the specification, of which they are a part. Phillips
v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
(en banc). A court should also consult the patent’s prosecution
history, which can provide further evidence of how
the inventor understood the claimed invention. Id. at
1317. Extrinsic evidence, including dictionaries, can at
times shed useful light on the relevant art; but extrinsic
evidence is less significant than the intrinsic record in
determining the meaning of claim language. Id.
Here, intrinsic evidence trumped extrinsic:
We agree with Lexington that the district court erred
by adopting a construction based on general-purpose
dictionaries that is inconsistent with the intrinsic record.
Phillips, 415 F.3d at 1316 (“A construction that stays true
to the claim language and most naturally aligns with the
patent’s description of the invention will be, in the end,
the correct construction.”). “Trenches” as described in the
’851 patent are not necessarily “bounded on the sides and
bottom and open at the top.”
This case is another example of "how" Teva v. Sandoz is not
such a big impediment to CAFC review.