The Software IP Report
“Substantially Centered” Not Indefinite in Patent Claim
By Charles Bieneman
Categories: 35 U.S.C. § 112, Software Patents, The Software IP Report
The phrase “substantially centered” does not render a patent claim indefinite under 35 U.S.C. § 112, according to the court in the ongoing Apple-Samsung patent litigation. Apple, Inc. v. Samsung Elecs. Co., No.: 11-CV-01846-LHK (Jan 29, 2013, N.D. Cal.). At issue was claim 50 of U.S. Patent No. 7,864,163 (reproduced in full at the end of this post), directed to a “portable electronic device” that included a touchscreen display and instructions for including boxes that were “substantially centered” in the display.
The court first dismissed Apple’s argument that Samsung had waived its indefiniteness argument by not seeking to have the court construe the phrase “substantially centered,” or including its indefiniteness argument in its pretrial statement. According to the court, “failure to seek construction of a term during claim construction does not constitute waiver of an indefiniteness argument.” The court noted that the applicable Local Patent Rules limited the number of terms a party could seek to have construed. Further, Samsung did raise the indefiniteness issue in its invalidity contentions, and in its proposed jury instructions. During trial, Apple agreed that the issue could be addressed in post-trial motions, and the court had indicated that Samsung could raise the issue in a non-jury brief.
Turning to the substantive question of indefiniteness, the court disagreed with Samsung’s contention that “the term ‘substantially centered’ in the ’163 Patent is an indefinite term of degree, which cannot be construed because no objective anchor is provided in the specification.” Numerous Federal Circuit cases have held that the term “substantially” could indicate an approximation, absent clear and unmistakable disclaimer of this claim scope in the prosecution history. Further, Federal Circuit cases have held that the term “substantially” does not require a specific numerical boundary. This lack of specificity does not render the term indefinite; instead it is a term of degree that can be construed.
Samsung did not attempt to argue that the plain meaning of “substantially centered” could not be construed. Rather, “Samsung has argued that the fact that the Court cannot issue a more precise construction, based on the lack of an objective standard in the specification, makes it impossible to construe the term at all, thus rendering the term indefinite.” Unfortunately for Samsung, “this is not the law.”
Moreover, extrinsic evidence showed that the term “substantially centered” could be understood by those of ordinary skill in the art. Apple’s expert, unsurprisingly, testified that “a person of ordinary skill in the art, or actually even a — a person, a layman, would tell you that visually it’s by and large centered.” Unfortunately for Samsung, its expert, although attempting to recant at trial, “testified during his deposition that he had determined that some of Samsung’s accused products were capable of substantial centering as contemplated in the ’163 Patent.”
The court concluded that:
In sum, the Federal Circuit’s cases establish that precise construction is not required, or even permissible, when a patent uses a term of degree such as “substantially,” and the specification does not provide a standard for measuring the precise boundaries of that term of degree. Moreover, the evidence suggests that persons of ordinary skill in the art can understand the meaning of the term “substantially centered.” Accordingly, the Court finds that the term “substantially centered” is not indefinite.
Although not discussed in this post, it should be noted that the court also devoted a substantial portion of its opinion to holding that four of Apple’s design patents were not indefinite.
Claim 50 of the ’163 patent recites as follows:
50. A portable electronic device, comprising:
a touch screen display;
one or more processors;
memory; and
one or more programs, wherein the one or more programs are stored in the memory and configured to be executed by the one or more processors, the one or more programs including:
instructions for displaying at least a portion of a structured electronic document on the touch screen display, wherein the structured electronic document comprises a plurality of boxes of content;
instructions for detecting a first gesture at a location on the displayed portion of the structured electronic document;
instructions for determining a first box in the plurality of boxes at the location of the first gesture;
instructions for enlarging and translating the structured electronic document so that the first box is substantially centered on the touch screen display;
instruction for, while the first box is enlarged, a second gesture is detected on a second box other than the first box; and
instructions for, in response to detecting the second gesture, the structured electronic document is translated so that the second box is substantially centered on the touch screen display.