It is never a good sign when a court describes patent language as “at best muddled.” But that is precisely what happened in the recent case of Interval Licensing LLC v. AOL, Inc. In this decision, the U.S. Court of Appeals for the Federal Circuit rejected a patent based on the test for indefiniteness recently laid out by the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments.
A peripheral matter
Interval Licensing held two patents for “occupying the peripheral attention of a person in the vicinity of a display device,” such as a computer screen. The patents describe a system that:
- Acquires data from a content provider,
- Schedules the display of that data,
- Generates images from the data, and
- Displays images on a device.
The patents describe two main embodiments: 1) a “screen saver” that displays the images during a period of inactivity, and 2) “wallpaper” that displays the images on the background of a screen. The images display “in an unobtrusive manner that does not distract a user,” according to the patent.
Interval sued AOL, alleging that AOLinfringed the patents through products and software that use “pop up” notifications to present information to users. The district court found the patents invalid because the terms “in an unobtrusive manner” and “does not distract” were indefinite. Interval appealed.
According to 35 U.S.C. §112, “a patent must conclude with one or more claims particularly pointing out and distinctly claiming” the invention at issue — i.e., the patent must possess “definiteness.”
In the Nautilus ruling, the Supreme Court explained that the standard for determining definiteness needs to allow for a “modicum of uncertainty” to provide incentives for innovation. But the standard must also require clear notice of the invention being claimed to apprise those skilled in the field of the scope of the claimed invention relative to both granted patents and potential future patents of others.
Therefore, the Court held, a patent is invalid for indefiniteness if, when read in light of the patent’s specification and prosecution history with the U.S. Patent and Trademark Office (USPTO), it fails to inform with reasonable certainty those individuals skilled in the relevant art.
Key claim language
The Federal Circuit began Interval Licensing analysis by noting that the key claim language at issue included a “term of degree” — that is, “unobtrusive manner.” It made clear that terms of degree are not inherently indefinite. In fact, claim language using such terms has long been found definite when it provides enough certainty to one skilled in the field when read in the context of the invention.
The court noted, though, that a patent does not satisfy the definiteness requirement merely because a court can ascribe some meaning to a patent’s claims. Here, the Federal Circuit found that the phrase “unobtrusive manner” was highly subjective and provided little guidance on its face. Specifically, the term offered no objective indication of the manner in which content images were to be displayed to the user.
The court then turned to the patent’s written description for guidance, but found the specification distinctly lacking in descriptiveness, too.
The Federal Circuit rejected Interval’s contention that the phrase was sufficiently defined through its relationship to the wallpaper embodiment, thus informing those skilled in the field that “unobtrusive” has only a spatial (as opposed to temporal) meaning in the context of the patents. Although Interval identified portions of the patent specification that appeared to use the phrase “unobtrusive manner” in conjunction with the wallpaper embodiment, the court said, other portions of the specification suggested that the phrase could also be tied to the screen saver embodiment.
The prosecution history further illustrated the difficulty in determining the relationship between the written description and the “in an unobtrusive manner that does not distract the user” claim phrase. The statements of Interval, and the USPTO’s responses, reflected considerable uncertainty about which embodiments were tied to the “unobtrusive manner” language.
The Federal Circuit’s finding of indefiniteness in this case serves as a valuable reminder of the risks related to subjective claim language in patents. To satisfy the definiteness standard, a patent must provide objective boundaries that convey the invention’s scope to those skilled in the field with reasonable certainty.