CAFC affirms D. Utah's invalidity determination in 3Form v. Lumicor

Of interest in 3Form v. Lumicor :


The district court adopted its construction despite the
parties largely agreeing to a different one. Specifically,
3form proposed that “unnatural appearing conformation”
means “the appearance of an object when its structural
integrity collapses, such that the object splits, cracks, or
substantially deforms.” Dist. Ct. Op., 2015 WL 9463092,
at *5. Lumicor only disputed the “substantially deforms”
portion of 3form’s proposed construction, asserting that
instead of “substantially deforms,” the term requires
“significantly deforms.” Id. We agree with the arguments
the parties made before the district court regarding this
term’s construction



Also, the CAFC noted another disagreement with the district
court:



We also disagree with the district court’s decision to
limit the term to a mathematical requirement of 75%
compression based on a sentence in the specification that
merely states that there “are varying degrees of collapse,
or compression” and that an unnatural conformation
“may” mean that an object has compressed to 90% of its
thickness or as little as 75% of its thickness “and so on.”
Id. col. 4 ll. 40–45 (emphasis added). Plucking one of
these percentages out of a range of possibilities was not a
proper approach for claim construction. See Conoco, Inc.
v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1357–58
(Fed. Cir. 2006) (“[W]hen a claim term is expressed in
general descriptive words, we will not ordinarily limit the
term to a numerical range that may appear in the written
description or in other claims.”) (quoting Renishaw PLC v.
Marposs Societa’ per Azioni, 158 F.3d 1243, 1249
(Fed. Cir. 1998)).


Of indefiniteness:


We reject
Lumicor’s indefiniteness argument. “[A] claim must
‘inform those skilled in the art about the scope of the
invention with reasonable certainty’ to meet the definiteness
requirement of 35 U.S.C. § 112, ¶ 2.” Liberty Ammunition,
Inc. v. United States, 835 F.3d 1388, 1396
(Fed. Cir. 2016) (quoting Nautilus, Inc. v. Biosig Instrs.,
Inc., 134 S. Ct. 2120, 2129 (2014)). Yet, “absolute precision
is unattainable” when drafting patent claims. Nautilus,
134 S. Ct. at 2129. Thus, “a patentee need not define
his invention with mathematical precision in order to
comply with the definiteness requirement.” Sonix Tech.
Co. v. Publ’ns Int’l, Ltd., No. 2016-1449, 2017 WL 56321,
at *5 (Fed. Cir. Jan. 5, 2017) (quoting Invitrogen Corp. v.
Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005))
(...)
We therefore reject Lumicor’s indefiniteness argument
and adopt 3form’s proposed construction of “substantially
natural conformation” to mean “[t]he
appearance of an object in a relatively uncompressed or
natural state, even if not perfectly natural or uncompressed.”



The topic of waiver arose:


The district court also held that Schober anticipates
dependent claims 2–3, 5–6, 8–14, and 16–18. On appeal,
3form challenges the district court’s anticipation findings
for dependent claims 5 and 16, which require that at least
one of the two extruded resin sheets “comprise extruded
polycarbonate.” Before the district court, 3form did “not
dispute [whether] the ’327 Patent [Schober] describes the
use of polycarbonate,” J.A. 1022, 1028, and it never specifically
argued or articulated why Schober’s use of polycarbonate
would impact the “substantially natural appearing
conformation” limitation, as it does now for the first time
on appeal. We conclude, therefore, that 3form waived its
separate arguments on these claims. Thus, we affirm the
district court’s summary judgment holding that Schober
anticipates dependent claims 2–3, 5–6, 8–14, and 16–18.


Of the design patent:


The obviousness
inquiry for design patents is not so limited, as it asks
whether a designer “would have combined teachings of the
prior art to create the same overall visual appearance as
the claimed design,” not merely the figures or illustrations.
Durling v. Spectrum Furniture Co., 101 F.3d 100,
103 (Fed. Cir. 1996) (emphasis added). Because 3form’s
expert did not consider Schober’s teachings in full, her
testimony regarding motivation to combine does not
preclude summary judgment of obviousness.