CAFC reverses ND Ill on indefiniteness point in Sonix case

In sonix v. Publications International, the CAFC reversed the
determination of indefiniteness of ND Illinois.


Sonix Technology Co., Ltd. (“Sonix”) appeals from the
district court’s grant of summary judgment following its
determination that claims 9, 25, 35–36, 52–55, 57–60, 62–
64, 66, 68, 71–77, 79–82, and 85–90 (“the asserted
claims”) of Sonix’s U.S. Patent 7,328,845 (“the ’845 patent”)
are invalid as indefinite. See Sonix Tech. Co. v.
Publ’ns. Int’l, Ltd., No. 13-cv-2082, 2015 WL 8153600, at
*9–17 (N.D. Ill. Dec. 8. 2015) (“Opinion”). Specifically, the
district court concluded that the term “visually negligible”
rendered the asserted claims indefinite under 35 U.S.C.
§ 112 ¶ 2.1 For the reasons that follow, we reverse the
determination of indefiniteness and hence the summary
judgment of invalidity.



Within the litigation:


During claim construction, Appellees initially asked
the district court to construe “visually negligible,” J.A.
2430, but, when they retained new counsel, proposed that
the term be given its ordinary meaning, J.A. 2434–36.
Sonix agreed with an ordinary-meaning construction, and
so the district court did not construe “visually negligible.”

(...)

The district court ultimately held that the claims are
invalid as indefinite. Opinion, 2015 WL 8153600, at *9–
17. Reasoning that “visually negligible” is “purely subjective”
and that the claim language does not provide guidance
on its meaning, the court turned to the other
intrinsic evidence. Id. at *13. The court determined that
the written description does not provide a person of
ordinary skill in the art “with a meaning that is reasonably
certain and defines objective boundaries” of the claim
scope. Id. The court rejected Sonix’s argument that
“visually negligible” means “something that may be
visible, but does not interfere with the user’s perception of
other visual information on a surface,” concluding that
defining the term “as reliant on the user’s perception
provides no objective standard by which to measure the
scope of the term—the user’s perception becomes the
measure and this is insufficient.” Id. (citing Datamize,
LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed.
Cir. 2005)).



As to standard of review:


We agree with Sonix that we review a district court’s
determination that a claim is invalid as indefinite under
35 U.S.C. § 112 ¶ 2 de novo, although, as with claim
construction, any factual findings by the district court
based on extrinsic evidence are reviewed for clear error.
Cox Commc’ns, Inc. v. Sprint Commc’n Co., 838 F.3d
1224, 1228 (Fed. Cir. 2016) (citing Teva Pharm. USA, Inc.
v. Sandoz, Inc., 135 S. Ct. 831, 840–42 (2015) (“Teva I”)).
To trigger clear error review, “it is not enough that the
district court may have heard extrinsic evidence during a
claim construction proceeding—rather, the district court
must have actually made a factual finding . . . .” Card-
Soft, LLC v. VeriFone, Inc., 807 F.3d 1346, 1350 (Fed. Cir.
2015) (citations omitted). Moreover, “[a] party cannot
transform into a factual matter the internal coherence
and context assessment of the patent simply by having an
expert offer an opinion on it. The internal coherence and
context assessment of the patent, and whether it conveys
claim meaning with reasonable certainty, are questions of
law.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d
1335, 1342 (Fed. Cir. 2015) (“Teva II”)



Eibel Process is cited:


Because language is limited, we have rejected the
proposition that claims involving terms of degree are
inherently indefinite. Interval Licensing, 766 F.3d at
1370. Thus, “a patentee need not define his invention
with mathematical precision in order to comply with the
definiteness requirement.” Invitrogen Corp. v. Biocrest
Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005) (citation
omitted). Indeed, “[c]laim language employing terms of
degree has long been found definite where it provided
enough certainty to one of skill in the art when read in
the context of the invention.” Interval Licensing, 766 F.3d
at 1370 (citing Eibel Process Co. v. Minn. & Ont. Paper
Co., 261 U.S. 45, 65–66 (1923)).



Of subjective analysis:


Appellees criticize what they see as the written description’s
low level of detail. Specifically, they argue that
the examples and requirements in the written description
cannot be translated to an objective standard for the
claim’s scope because they, too, are subjective. We disagree.
Just as the patent in Enzo included “examples of
suitable linkage groups,” 599 F.3d at 1334, the ’845 patent
includes examples of visually-negligible indicators,
’845 patent, col. 5 ll. 6–15. Just as the patent in Enzo
provided “some criteria for selecting [linkage groups that
did not substantially interfere],” 599 F.3d at 1334, the
’845 patent includes the differentiability, brightness, and
homogeneity “requirements for the graphical indicators
being negligible to human eyes,” ’845 patent, col. 4 l. 60–
col. 5 l. 5.

(...)

Appellees have not provided evidence that human
perception varies so significantly that reliance on it as a
standard renders the claims indefinite. See Warsaw, 778
F.3d at 1371. Thus, as in Enzo, the written description of
the ’845 patent supports the conclusion that a skilled
artisan would have understood the term with reasonable
certainty.



The CAFC indicating the holding was narrow:


Our holding in this case does not mean that the existence
of examples in the written description will always
render a claim definite, or that listing requirements
always provide sufficient certainty. Neither does the fact
that an expert has applied a contested claim term without
difficulty render a claim immune from an indefiniteness
challenge. As always, whether a claim is indefinite must
be judged “in light of the specification and prosecution
history” of the patent in which it appears. Interval Licensing,
766 F.3d at 1369. We simply hold that “visually
negligible” is not a purely subjective term and that, on
this record, the written description and prosecution
history provide sufficient support to inform with reasonable
certainty those skilled in the art of the scope of the
invention. The examiner’s knowing allowance of claims
based on the term that is now questioned, plus the acceptance
of the term by both parties’ experts, force us to
the conclusion that the term “visually negligible” is not
indefinite. Accordingly, we reverse the district court’s
conclusion that the asserted claims are invalid as indefinite.