CAFC overrules conclusion of indefiniteness in Grace Instrument case

The outcome:


Grace Instrument Industries, LLC (Grace) appeals a claim construction order issued by the United States District Court for the Southern District of Texas finding the term “enlarged chamber” indefinite and construing the term “means for driving said rotor to rotate located in at least one bottom section.” As a result of the district court’s order, the parties stipulated that asserted claims 1, 2, 4, 5, 7–9, 11, 14, 15, and 17 of U.S. Patent No. 7,412,877 (’877 patent) are invalid and that claims 4, 5, 7–9, 11, 14, 15, and 17 are not infringed, and the court entered final judgment in favor of Chandler Instruments Company, LLC (Chandler). Because the district court erred in its analysis of the term “enlarged chamber,” we vacate the district court’s determination that “enlarged chamber” is indefinite and remand for further proceedings consistent with this opinion. We affirm the district court’s construction of “means for driving said rotor to rotate located in at least one bottom section.”


AND


A “patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). “The ultimate conclusion that a claim is indefinite under 35 U.S.C. § 112, ¶ 2 is a legal conclusion, which we review de novo.” Cox Commc’ns, Inc. v. Sprint Commc’n Co., 838 F.3d 1224, 1228 (Fed. Cir. 2016) (citation omitted). “As in claim construction, we review a district court’s underlying factual determinations for clear error.” Id. (citations omitted). Moreover, “[a]ny fact critical to a holding on indefiniteness . . . must be proven by the challenger by clear and convincing evidence.” Id. (alteration in original) (citation and internal quotation marks omitted).


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Thus, although “enlarged chamber” is not a term of art, the intrinsic record sufficiently guides a skilled artisan to the meaning of that term as used in the ’877 patent. The district court erred in its reliance on extrinsic evidence— i.e., dictionary definitions—that contradict the scope and meaning of “enlarged chamber” that a skilled artisan would ascertain by reading the intrinsic record. See Phillips, 415 F.3d at 1322–23; see also id. at 1316 (“[O]ur cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.”); Trs. of Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1363 (Fed. Cir. 2016) (“The only meaning that matters in claim construction is the meaning in the context of the patent.”).


THUS


In sum, we find the term “enlarged chamber” in the ’877 patent to mean “a chamber that is large enough to contain excess test sample prior to pressurization to prevent mixing of the test sample and pressurization fluid in the lower measurement zone when the test sample is pressurized to maximum rated pressure.” We thus vacate the district court’s determination that “enlarged chamber” is indefinite, vacate the district court’s invalidity determinations based thereon, and remand for further proceedings consistent with this opinion.