Nicolas Seckel | September 18, 2014
Interval Licensing LLC v. AOL, Inc. (Precedential)
September 10, 2014
Panel: Taranto and Chen. Opinion by Chen.
The Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. (2014) rejected the Federal Circuit’s “insolubly ambiguous” test for indefiniteness, holding that the claim language must be capable of interpretation with “reasonable certainty” to avoid indefiniteness under 35 U.S.C. 112, second paragraph (now AIA 35 U.S.C. 112(b)).
Citing to Nautilus, but weaving in its own pre-Nautilus case law, a Federal Circuit panel affirms the District Court’s pre-Nautilus holding that claims reciting the expression “in an unobtrusive manner” are invalid for indefiniteness. Notably, the Appeals Court refuses to narrow the expression to an example of the patents’ description, in the absence of an indication in the description that the expression is defined by this example.
Interval owns the ‘652 and ‘314 patents to methods and systems for “engaging the peripheral attention of a person in the vicinity of a display device of an apparatus.” The technology intends to display secondary content to a user without distracting the user from a primary interaction with an apparatus (typically, a computer). Interval sued AOL, Google, Apple and Yahoo! for patent infringement.
Most claims at issue in the litigation recite a clause corresponding in substance to “displaying… in an unobtrusive manner that does not distract a user of the apparatus… an image…”
The District Court held that claims reciting the “unobtrusive manner” clause are invalid on the ground that the expression is indefinite. Interval appealed.
The Federal Circuit, in accordance with the Supreme Court’s pronouncement in Nautilus, Inc. v. Biosig Instruments, Inc., (2014), no longer uses an “insolubly ambiguous” or “not amenable to construction” standard for indefiniteness, but the somewhat less lenient “lack of reasonable certainty” standard (“fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention”).
A relative term is not prohibited per se under Nautilus, since the Supreme Court recognized that “absolute precision” is not possible. However, the claims must give “objective boundaries for those of skill in the art.” This condition is not met if one cannot make an “informed and confident choice” among possible interpretations, so that interpretation depends on “the unpredictable vagaries of any one person’s opinion.”
Here, the Court analyzes “unobtrusive manner” as a term of degree (“highly subjective”). The claims themselves do not provide guidance as to the scope, so the Court inquires whether this guidance can be found in the specification and prosecution history.
Interval’s position is that the expression is tied to the “wallpaper” embodiment in the description (display in background areas), but the Court holds that this link is not “reasonably clear,” since the specification mentions both the “wallpaper” embodiment and a “screen saver” embodiment (display during down-time) as part of “further embodiments,” so “the specification is at best muddled.” In addition, Interval had argued during prosecution that “unobtrusive manner” covered the “screensaver” embodiment. During initial prosecution and in subsequent reexamination proceedings, USPTO examiners did in fact interpret “unobtrusive manner” as limited to the “wallpaper” embodiment, but the Court notes that in a reexamination appeal, the PTAB found the specification “ambiguous” and concluded that the “unobtrusive manner” clause covers the “screensaver” embodiment under the “broadest reasonable interpretation” standard.
The Court also refuses to narrow the “unobtrusive manner” clause to a specific example in the description (pop-up window in an unused area of the display screen), even though the Summary of the Invention linked this example to the “unobtrusive manner” language. The Court comments on the difference between “e.g.” (meaning: “for example”) used in the description, which suggests a non-limiting example, and “i.e.” (meaning: “that is”), which introduces a definition. Thus, the presentation of “this lone example” in the description leaves open the possibility of other examples.
In sum, the Appeals Court affirms the invalidity of all claims reciting the “unobtrusive manner” clause. However, the case is remanded to the District Court with a modified interpretation of four other claims.
In the meantime, the Federal Circuit may have to tackle the validity of these four other claims on appeal from the USPTO, since the PTAB decision in the reexamination proceeding invalidated all the claims at issue as unpatentable over the prior art.
Although it does not upend previous Federal Circuit case law, Nautilus has opened a time of stricter review of definiteness. Patent practitioners will benefit from paying attention, not only to the language of the claims (such as the frame of reference for relative terms), but also to the discussion of this language in the description. Explicitly defining several expressions of varying scope (and claiming them in separate claims) may be preferable to definition by examples or strategic “muddling.”
Also, the parallel proceedings involving these patents in the Courts and at the USPTO are yet another example of the “two bites of the apple” strategies (litigation and reexaminations/reviews under AIA) for challenging patent validity under the current law.
Representative claim 1 of the 314 patent:
1. A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of:
providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device;
providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and
auditing the display of sets of content data by the content display system;
wherein the one or more sets of content data are selected from a plurality of sets of content data, each set being provided by an associated content provider, wherein each associated content provider is located in a different physical location than at least one other content provider and each content provider provides its content data to the content display system independently of each other content provider and without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system, and wherein for each set the respective content provider may provide scheduling instructions tailored to the set of content data to control at least one of the duration, sequencing, and timing of the display of said image or images generated from the set of content data