CLAIMS ARE VIEWED AND UNDERSTOOD IN THE CONTEXT OF THE SPECIFICATION AND THE PROSECUTION HISTORY
| March 7, 2022
Nature Simulation Systems Inc., v. Autodesk, Inc.
Before NEWMAN, LOURIE, and DYK, Circuit Judges. Opinion for the court filed by Circuit Judge NEWMAN. Dissenting opinion filed by Circuit Judge DYK.
Summary
The Federal Circuit ruled in a split decision that the United States District Court for the Northern District of California erred in invalidating Nature Simulation System’s patents as indefinite.
Background
NSS sued Autodesk for allegedly infringing US Patents No. 10,120,961 (“the ’961 patent”) and No. 10,109,105 (“the ’105 patent”). The ’961 patent is a continuation-in-part of the ’105 patent, and both are entitled “Method for Immediate Boolean Operations Using Geometric Facets” directed to a computer-implemented method for building three-dimensional geometric objects using boolean operation.
The district court held a claim construction (Markman) hearing and subsequently ruled the claims invalid on the ground of claim indefiniteness, 35 U.S.C. § 112(b). In the hearing, Autodesk presented an expert declaration to request the construction of eight claim terms. NSS argued that construction is not necessary and the challenged terms should receive their ordinary meaning in the field of technology. The district court did not construe the terms. The district court explained that a claim term is indefinite, as a matter of law, if there are any “unanswered questions” about the term. The decision of the district court was based on two of the challenged terms in clauses [2] and [3] of Claim 1:
1. A method that performs immediate Boolean operations using geometric facets of geometric objects
implemented in a computer system and operating with a computer, the method comprising:
[1] mapping rendering facets to extended triangles that contain neighbors;
[2] building intersection lines starting with and ending with searching for the first pair of triangles that hold a start point of an intersection line by detecting whether two minimum bounding boxes overlap and performing edge-triangle intersection calculations for locating an intersection point, then searching neighboring triangles of the last triangle pair that holds the last intersection point to extend the intersection line until the first intersection point is identical to the last intersection point of the intersection line ensuring that the intersection line gets closed or until all triangles are traversed;
[3] splitting each triangle through which an intersection line passes using modified Watson method, wherein the modified Watson method includes removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion;
[4] checking each triangle whether it is obscure or visible for Boolean operations or for surface trimming;
[5] regrouping facets in separate steps that includes copying triangles, deleting triangles, reversing the normal of each triangle of a geometric object, and merging reserved triangles to form one or more new extended triangle sets; and
[6] mapping extended triangles to rendering facets.
The two terms are “searching neighboring triangles of the last triangle pair that holds the last intersection point” and “modified Watson method.” The district court stated that even if the questions are answered in the specification, the definiteness requirement is not met if the questions are not answered in the claims. NSS argued that on the correct law the claims are not indefinite.
Discussion
The Federal Circuit cited the opinion in Nautilus and emphasized that the claims are viewed and understood in the context of the specification and the prosecution history, as the Court summarized in Nautilus (Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 909 (2014) ).
The district court held the claims indefinite based on the “unanswered questions” that were suggested by Autodesk’s expert, as stated in the Declaration:
¶ 27. [T]he claim language, standing alone, does not specify which of those neighboring, intersecting triangles should be used to identify additional intersection points. Nor does the claim specify (where there are multiple potential intersection points for a given pair of neighboring triangles) which of the multiple potential intersection points should be used to extend the intersection line. Thus, the claim language is indefinite.
The Federal Circuit states that the “unanswered questions” is an incorrect standard and specifically pointed out that “ ‘Claim language, standing alone’ is not the correct standard of law, and is contrary to uniform precedent.” The Federal Circuit found that the district court did not consider the information in the specification that was not included in the claims and the district court misperceived the function of patent claims.
The Federal Circuit also noted that the court did not discuss the Examiner’s Amendment. During the prosecution of the ‘961 patent, the examiner discussed with the inventor and later suggested an amendment in the Notice Of Allowance to clarify the disputed language. The examiner suggested amending claim 1 and then withdrew the rejection based on the amendment. The amendment includes the limitation of the term in clause [3] as follows:
[3] splitting each triangle through which an intersection line passes using modified Watson method, wherein the modified Watson method includes removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion;
The Federal Circuit noted that the district court did not discuss the Examiner’s Amendment and held that the claims are invalid since the questions raised by Autodesk’s expert were not answered. The Federal Circuit found that the district court fails to give proper weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims. The Federal Circuit further explained that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.” The Federal Circuit stated that “[i]t is not disputed that the specification describes and enables practice of the claimed method, including the best mode. The claims, as amended during prosecution, were held by the examiner to distinguish the claimed method from the prior art and to define the scope of the patented subject matter.”
Judge Dyk dissented from the majority and opined that the district court had read the patent claims in light of the specification to determine if it would inform those skilled in the art about the scope of the invention with reasonable certainty, which is exactly what is required under Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). Judge Dyk also states that the majority simply does not address the problem that the limitations are “not describe[d]” in the patent, “ambiguous” and “unclear,” and “inconsistent with” Figure 13 and the accompanying text. In his view, the test for definiteness is whether the claims “inform those skilled in the art about the scope of the invention with reasonable certainty,” but the majority relied on the fact that these limitations were suggested by the patent examiner.
Takeaway
- Claims are viewed and understood in the context of the specification and the prosecution history.
- Patent claims must provide sufficient clarity to inform about the scope of the invention with reasonable certainty.
