Monday, August 21, 2017

CAFC in Walter declines to enter into a highly subjective inquiry depending “on the unpredictable vagaries of any one person’s opinion.”

The outcome of an ex parte re-exam of a patent directed to artificial reefs
for cultivating marine life was that appellant Walter lost at the CAFC:

David Walter appeals the decision of the Patent Trial
and Appeal Board (“Board”) in an ex parte reexamination
proceeding involving U.S. Patent No. 7,513,711 (“the ’711
patent”). See Ex parte David Walter, No. 2015-006121,
2015 WL 5144184 (P.T.A.B. Aug. 31, 2015). In its decision,
the Board ruled that all twelve claims of the ’711
patent lack adequate written description and are indefinite
under 35 U.S.C. § 112. Id. at *2–3. We affirm.

As to "written description," the CAFC wrote:

Compliance with the written description requirement
is a question of fact we review for substantial evidence.
ULF Bamberg v. Dalvey, 815 F.3d 793, 797 (Fed. Cir.
2016) (citing Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir.
2011)). Substantial evidence justifies a finding if a reasonable
mind might accept the evidence to support it.
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

As to indefiniteness:

At the outset, we decline to adopt the Board’s implicit
determination that a patent claim is indefinite because
the specification uses a term differently from its dictionary
definition. See Ex parte Walter, 2015 WL 5144184, at
*2. The specification is “always highly relevant to the
claim construction analysis. Usually, it is dispositive.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc) (internal quotation marks omitted) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). If there is a conflict between the
specification and a general purpose dictionary as to a
claim’s proper meaning, the specification controls. Id. at


Here, “block-like” is a term of degree without any accompanying
guidance in the intrinsic record for determining
its scope. The term ostensibly covers a range of
shapes that are sufficiently “like” a “block” and excludes
those that are not. But nothing in the intrinsic record
offers “objective boundaries” for ascertaining whether a
given shape falls into either category. See Interval Licensing,
766 F.3d at 1371. And because the “present invention
10 can be fabricated in any shape without deviating
from the objectives thereof,” see ’711 patent, col. 3 ll. 52–
54 (emphasis added), determining whether a particular
shape is “block-like” thus strikes us as devolving into a
highly subjective inquiry depending “on the unpredictable
vagaries of any one person’s opinion.” Interval Licensing,
766 F.3d at 1371 (quoting Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)).
When, as here, “nothing in the specification, prosecution
history, or proper art provides any indication as to what
range of [structures] is covered by the term,” the claim is
indefinite. Amgen, Inc. v. Chugai Pharm. Co., Ltd. 927
F.3d 1200, 1218 (Fed. Cir. 1991).


And even if it were possible to
harmonize all of Mr. Walter’s statements, it is not enough
“that a court can ascribe some meaning to a patent’s
claims; the definiteness inquiry trains on the understanding
of a skilled artisan at the time of the patent application,
not that of a court viewing matters post hoc.”
Nautilus I, 134 S. Ct. at 2130. Here, the term’s ill-defined
boundaries coupled with the patentee’s erratic use of the
term fails to inform skilled artisans about the scope of the
invention with reasonable certainty. Id. at 2124. The
term is indefinite.

Of interest

Citing to Mr. Miller’s expert declaration, Mr. Walter
urges that “block-like” is a term of art in the structural
engineering field. Appellant’s Br. 12, 17–18, 23. We are
not persuaded by this argument. First, Mr. Miller does
not support his opinion with evidence or analysis, and his
testimony is wholly conclusory. See J.A. 178 ¶ 6.
“[C]onclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a court,” Phillips,
415 F.3d at 1318, and thus we give Mr. Miller’s
testimony no weight. See SkinMedica, Inc. v. Histogen
Inc., 727 F.3d 1187, 1210 (Fed. Cir. 2013) (giving “no
weight” to expert testimony in similar circumstances).
Second, it is difficult to fault the Board for purportedly
overlooking Mr. Miller’s declaration when Mr. Walter
never relied on it. In both his opening and reply briefs to
the Board, Mr. Walter argued that the claims were consistent
with the examiner’s construction of “block” and did
not urge that the phrase implicated a term of art. See
J.A. 401–02, 482–83. Nor did Mr. Walter rely on
Mr. Miller’s declaration during the oral hearing before the
Board. See J.A. 509–13. We therefore see no error in the
Board’s decision to disregard Mr. Miller’s testimony.

In the end, "written description" was not addressed:

Having determined that claims 1–12 of the
’711 patent, as amended, are indefinite, we do not reach
the issue of whether they are also unpatentable for failing
to comply with the written description requirement under
35 U.S.C. § 112, first paragraph.


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