The Software IP Report

Federal Circuit Says a Seemingly Subjective Claim Term Is Not Indefinite under 35 USC § 112

By Thomas Bejin

Categories: 35 U.S.C. § 112, The Software IP Report

The Federal Circuit has reversed the Northern District of Illinois’ conclusion that the phrase “visually negligible” renders a patent claim invalid under 35 U.S.C. § 112 as indefinite.   Sonix Technology Co., LTD. v. Publications International, LTD, No. 16-1449 (Fed. Cir. Jan. 5, 2017).  The district court’s ruling should hardly have come as a surprise since the Federal Circuit has previously held the phrases “aesthetically pleasing” and “unobtrusive manner” invalid as purely subjective.  See Datamize, LLC v. Plumtree Software Inc., 417 F.3d 1342 (Fed. Cir. 2005); Interval Licensing LLC v. AOL, Inc., 766 F3d 1364 (Fed. Cir. 2014).    However, Judge Lourie, writing on behalf of a unanimous panel that also included Judges O’Malley and Taranto, concluded that in this case the examples in the specification saved the seemingly indistinguishable subjective phrase “visually negligible.”

The Court’s began its analysis by concluding that its indefiniteness review would be entirely de novo because the district court did not rely on extrinsic evidence in reaching its conclusion of indefiniteness.

Turning to the question of indefiniteness, the Federal Circuit stated that where a term of degree lacks guidance from the specification it is indefinite but where such guidance is provided the term may have sufficient clarity.  While recognizing that the patents in both Datamize and Interval had examples of the disputed claim terms, the Court here distinguished those examples because they left too much to the “vagaries of any one person’s opinion,” or turned too much on a person’s tastes or opinions.   In contrast to Datamize and Interval, the Federal Circuit found that the phrase “visually negligible” in the present case was different because it turned on “whether it interferes with a user’s perception … [in terms of] what can be seen by the normal human eye.”

The Court then went on to discuss the examples of “visually negligible” in the specification, and reasoned that those examples provided “guidance and points of comparison for skilled artisans.”   The Court concluded by analyzing the file history of the patent at issue, and the conduct of the litigants relative to their application of the term “visually negligible.”  Further, the Court deferred to the Patent Office’s application of the term “visually negligible as evidence of clarity, which strikes this author as anomalous when in so many other decisions the Federal Circuit provides no deference to the Patent Office.

Lessons for Practice

When drafting a patent application, it is good practice to include as much objective definition and as many concrete examples as possible.  This will contribute to the clarity of claim terms, and reduce the likelihood of a later finding of indefiniteness.  When evaluating claims for invalidity under 35 U.S.C. § 112 ¶ 2, closely analyze the specification and file history for any examples or other objective indicia of claim boundaries.