by Dennis Crouch
Icon Health v. Polar Electro & Garmin Int’l. (Fed. Cir. 2016) [IconHealth]
In a non-precedential opinion, the Federal Circuit has affirmed that Icon’s asserted patent claims are invalid because they “fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Although indefiniteness is a question of law subject to de novo review, the starting point of that review is almost always the district court opinion – thus the court here looked for errors in the district court decision. That is especially true here where the district court decision was based in part on underlying factual conclusions that receive deference under Teva.
Claims define the scope of the exclusive patent right and there are a number of benefits associated with having that scope clearly delineated. Because patentees have control of claim language, the law places a burden on patentees to also ensure clarity. Section 112 of the Patent Act requires that requires “one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” In Nautilus, the Supreme Court interpreted the statute as requiring claims to “inform those skilled in the art about the scope of the invention with reasonable certainty.” As I have written before, “reasonable certainty” is generally thought of as a high standard that is difficult to meet, but the Supreme Court did not elaborate on its meaning in the patent context. Up to now, the Federal Circuit has also resisted an exploration of the term’s meaning other than noting that the standard is significantly higher than was was previously in play.
The patent at issue covers an “exercise system” that includes “in-band communication” with a local server; “out-of-band communication” with the user; and a “relationship” between the in-band and out-of-band communication. Both the district and appellate courts found that this “relationship” was undefined and that the distinction between the two forms of communication was unduly ambiguous.
At the Markman hearing, the district court allowed expert testimony on the meaning and definiteness of these terms and the Federal Circuit approved of that approach – since “the indefiniteness of the claim terms simply cannot be resolved by reference solely to the intrinsic evidence (i.e., the claims, specification, and prosecution history).” The defendants here took an interesting tack of presenting ten-different extrinsic references and showing that the meaning of the communication forms would vary depending upon which was chosen. Thus, based upon that evidence, the courts found “that those skilled in the art understand that the terms ‘in-band’ and ‘out-of-band’ are relative terms, and only have meaning in a given context with a defined reference, such as a frequency, a channel, a protocol, time slots, and data streams.” Because the patents themselves offered no such context, they were deemed indefinite.
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I mentioned above that indefiniteness is a question of law. A major limitation on that approach however comes from Teva, where the Supreme Court held that underlying factual conclusions regarding evidence extrinsic to the file history should be given deference on appeal. Here, the court found that the conclusions regarding the ten extrinsic references “constitute findings of fact, and we review such factual findings for clear error. Teva.”
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Level of Proof Depends upon Purpose of Proof: Teva does offer an interesting dichotomy regarding factual conclusions that may need further exploration. Although parties may benefit from deference on appeal – there is also the higher standard of proof – “clear and convincing evidence” – that must be met before a claim may be found invalid. The result of this evidentiary burden then is that the level of proof required to support factual conclusions underlying a claim construction determination will depend upon the purpose for which the claim construction is being used. If invalidity then the underlying conclusions require presentation of clear-and-convincing evidence; if infringement then the court’s underlying conclusions require only a preponderance of the evidence.