The Claims Interpreted Report

District Court Construes “Small Quantities” as a Definite Term

By Chris Francis

Categories: 35 U.S.C. § 112, The Claims Interpreted Report

The term “small quantities of finely-divided liquid” was construed as being a definite term under §112, second paragraph, in the Markman order in Ecoservices, LLC v. Certified Aviation Services, LLC (CDCA; Docket CV 16-01824-RSWL-SPx).

The claim at issue is claim 1 of US Patent 5,868,860, which reads as follows:

1. A method of washing turbine compressors, which operate with large quantities of air and therefore become internally soiled by and coated with contaminants carried by the air, therewith giving rise to greater fuel consumption, higher temperatures and higher emissions with substantially impaired efficiency as a result thereof, wherein small quantities of finely-divided liquid are sprayed onto and through the turbine compressors, characterized by running the turbine compressors and spraying the finely-divided liquid quantities through at least one nozzle towards and through the turbine compressor at an overpressure within the range of 50-80 bars and at a liquid particle size in the range of 250-120 μm, and with a total volumetric flow through the nozzle or nozzles within the range of 0.5-60 l/min., and with a liquid particle velocity of 100-126 m/sec., whereby the liquid is finely-divided to a degree at which the particles of liquid will follow the same routes through the turbine compressor as those previously taken by the air-borne contaminants, when spraying said liquid onto and through said turbine compressor. (emphasis added).

The Defendant argued that the term “small quantities of finely-divided liquid” is indefinite because a person of ordinary skill would understand that “quantity” refers to “a volume of liquid, and that claim 1 does not provide define any quantitative guidance as to what qualifies as “small.”

Citing Federal Circuit precedent, the District Court noted that a “patentee need not define his invention with mathematical precession in order to comply with the definiteness requirement.” Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1341 (Fed. Cir. 2003)(citing In Re Marosi, 710 F.2d 799, 802-03 (Fed. Cir. 1983)).

The District Court held that the term was definite because the patentee described “small quantities” as a finely divided liquid that is sprayed onto and through the object in quantities corresponding to 0.5-60 l/min.” Further, as shown in the claim above, when read as whole, the claim itself provides this same definition. Finally, the plaintiff also provided expert testimony supporting this definition. Based on these factors, the Court agreed with the plaintiff that the term was definite under §112, second paragraph.