The Court held, in Arctic Cat Inc., v. Polaris Industries Inc., No. 16-cv-0010 wmw, (MN Dec. 20, 2017), these terms, in the context of the specification and the prosecution history, gave sufficient guidance to a person skilled in the art to understand the contours of the invention, denying Polaris’ motion for summary judgment of invalidity.
Plaintiff Arctic Cat. Inc. (Arctic Cat) asserted that Defendant Polaris Industries Inc. (Polaris) infringed claims in U.S. Patent No. 7,743,864 (the ‘864 patent). Polaris moved for summary judgment, arguing that independent claims 1 and 9, and dependent claim 14 are invalid for including indefinite claim terms.
Representative claims 1 and 9 and recite in relevant portion:
1. A multi-purpose vehicle, comprising: . . .
a straddle mount seat secured to the frame, the seat having seating positions for a driver and a passenger of the vehicle, the position for the passenger being located rearward and significantly above the seating position for the driver; . . .
9. A multi-purpose vehicle, comprising: . . .
a straddle mount seat secured to the frame, the seat having a driver seat and a passenger seat located rearward and raised substantially above the driver seat so as to provide a passenger a view of oncoming terrain; . . .
Polaris argued that the claim terms “substantially above” and “significantly above” are indefinite and the claims invalid. The Court disagreed.
Initially, citing Sonix Tech. Co. v. Publ’ns Int’l Ltd., (Fed. Cir. 2017), the Court determined that “substantially above” and “significantly above” are not purely subjective, as they do not implicate matters of individual taste or preference. Rather, these terms are “measurable, even if they are not mathematically precise.” The Court, citing Deering Precision Instruments, L.L.C. v. Vector Distrib. Sys., Inc. (Fed. Cir. 2003), that it is “often the case” that “the written description does not explicitly identify the meaning of the term” and therefore, the Court must evaluate these terms in context.
The Court found sufficient context in the specification. The ’864 patent explains that a “raised position or plane may provide the passenger with a better view for anticipation of terrain” and that footrests “may extend in a plane vertically higher than [the driver’s] footrest.” These statements provided context to evaluate the terms. Based on this context, the Court determined that (1) “substantially” and “significantly” are terms of magnitude, and not terms of “approximation,” (2) the passenger seat must be “above” or “raised” relative to the driver’s seat, (3) the degree of magnitude is relative to the driver’s seat and (4) the difference in height must be sufficiently “substantial” or “significant” to permit the passenger to see of the driver. Figures 1 and 5 provided examples of a passenger seat according to the claims.
The Court concluded that the context provides a person skilled in the relevant art guidance on how to create a passenger seat that is substantially or significantly above the driver’s seat and held the claims not indefinite. The motion for summary judgement was denied.
Lessons for Practice
There are times when it is difficult to avoid words of approximation such as “substantially” or “significantly” in a claim. The patent practitioner, in these cases, needs to consider the context in which these terms are used, and make a strategic decision whether merely providing context in the specification is sufficient to satisfy §112, or whether it makes more sense to provide an explicit definition in the specification.
For further discussion on the use of relative claim terms, please see Words of Approximation: The Fine Line between being Definite or Indefinite in Prosecution.