Caselaw retrospectives: (04/02/21)

This is a compilation of recent caselaw and high-level subject matter and holdings taken from a recent seminar on the topic:

Am. Axle & Mfg., Inc. v. Neapco Holdings LLC (response due 3/31/21)

Section 101 case involving a process for balancing a vehicle axle. The issues are

1. What standard determines whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Supreme Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101; and
2. whether patent eligibility (at each step of the Supreme Court’s two-step framework) is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent.

• ScotusBlog page

Synchronoss Techs., Inc. v. Dropbox, Inc., 987 F.3d 1358 (Fed. Cir. 2/12/21)

Claim contains impossibility. Stated the court:

“Here, the asserted claims of the ’446 patent are nonsensical and require an impossibility—that the digital media file contain a directory of digital media files. Adopting Synchronoss’s proposal would require rewriting the claims, but “it is not our function to rewrite claims to preserve their validity.” Allen, 299 F.3d at 1349. We therefore hold that the claims are indefinite as a matter of law under § 112, paragraph 2.”

Means+function. Stated the court:

“If a claim term invokes § 112, paragraph 6, we apply a two-step process for construing the term. The first step is to identify the claimed function. Williamson, 792 F.3d at 1351. The second step is to determine whether sufficient structure is disclosed in the specification that corresponds to the claimed function. Id. If the specification fails to disclose adequate corresponding structure, the claim is indefinite. Id. at 1351–52.
[. . .]
The term “user identifier module” appears in all asserted claims of the ’696 patent. . . . The corresponding text cited by Synchronoss, however, does not detail what a user identifier module consists of or how it operates.
[. . .]
It is not enough that a means-plus-function claim term correspond to every known way of achieving the claimed function; instead, the term must correspond to “adequate” structure in the specification that a person of ordinary skill in the art would be able to recognize and associate with the corresponding function in the claim. See Williamson, 792 F.3d at 1352. Because the term “user identifier module” fails in this regard, we hold that the term is indefinite and, thus, the asserted claims of the ’696 patent are invalid.

IQASR LLC, v. Wendt Corp., 825 Fed App'x 900 (Fed. Cir. Sept. 15, 2020

The Fed. Cir. affirmed district court finding of invalidity based on indefiniteness on claim term “magnetic fuzz” and “low susceptance microparticles.” Stated the court:

• “In construing these terms, the court found 'magnetic fuzz' indefinite, rendering independent claim 1 (and thus the remaining claims, all dependent from claim 1) indefinite.”
• “When a term 'has no ordinary and customary meaning,' it is a 'coined term,' raising the question of 'whether the intrinsic evidence provides objective boundaries to the scope of the term.' Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1353 (Fed. Cir. 2019) (citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014).”
• “Ultimately, to discern 'magnetic fuzz,' an artisan has to find the low susceptance microparticles,4 and then identify which low susceptance microparticles are disassociated magnetically active microparticles. Because the multiple layers of definitions are all open-ended and non-limiting, a skilled artisan must wade through a morass of uncertainty and contradiction to get to this point. It is this word salad of inconsistent indirect definitions and examples that so flummoxed the district court. We agree with the district court that '[t]he lack of a meaningful description of what constitutes magnetic fuzz prevents a person skilled in the art from knowing when it is present and how to address it.' Decision at *7. A technical degree or industry experience does not confer the ability to transcend patent ambiguity.”
• “IQASR argues that magnetic fuzz is definite because 'the skilled artisan would presumably be familiar with what clogged the non-ferrous recovery system and would thereby recognize magnetic fuzz.' Appellant’s Br. 43 (emphasis omitted). But this asserts a subjective view of the claims that improperly allows 'the

scope [to] vary from day-to-day and from person-to-person,' providing 'a moving target that may change over time.' Icon Health & Fitness, Inc. v. Polar Electro Oy, 656 F. App’x 1008, 1016 (Fed. Cir. 2016).

Infinity Computer Prods. v. Oki Data Ams., Inc., 987 F.3d 1053 (Fed. Cir. Feb. 10, 2021)

The court here held that “Indefiniteness may result from inconsistent prosection history statements where the claim language and specification on their own leave uncertainty that, if unresolved, would produce indefiniteness.”