Disclosure and Definiteness

I believe the clincher in this case is the fact that TVnGO’s patent claims use language not found anywhere within the patent specification.  The result, claims invalid as indefinite. — Dennis Crouch

TVnGO v. LG Electronics (Fed. Cir. 2021) (nonprecedential) [Opinion]

Patentee TVnGO sued LGE–alleging that its Smart TV’s infringed U.S. Patent Nos. 8,132,220, 9,124,945, 9,392,339, 9,407,969, and 9,794,621.  The district court found all asserted claims across the five related patents invalid as indefinite under 35 U.S.C. 112.  On appeal, the Federal Circuit has affirmed. Opinion by Judge Prost, joined by Judge Reyna and Senior Judge Schall.

Section 112(b) of the Patent Act requires “one or more claims particularly pointing out and distinctly claiming” the invention. The language is only slightly modified from historical statutes:

• Patent Act 1836: “But before any inventor shall receive a patent for any such new invention or discovery he … shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.”
• Patent Act 1870: “[B]efore any inventor or discoverer shall receive a patent for his invention or discovery, he … shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.”

The addition of claims in the 1836 Act was designed to provide notice to the world as to the scope of the patent right following an on-point complaint from the U.S. Supreme Court (and others). See Evans v. Eaton, 20 U.S. 356 (1822). Over the years, the Supreme Court focused more on the importance of claims for publicly demarking the property line.  See Winans v. Denmead, 56 U.S. 330, 347 (1853) (Campbell, J., dissenting); Merrill v. Yeomans, 94 U.S. 568, 573 (1876) (The patent laws “leave no excuse for ambiguous language or vague descriptions. The public should not be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights.”).  The 1952 Act did not appear to change these general rules but rather attempted to clean-up the requirement slightly by grammatically separating the disclosure requirements 112¶1 from the claim requirements 112¶2. In his  contemporary commentaries, P.J. Frederico explained that “the clause relating to the claim has been made a separate paragraph to emphasize the distinction between the description and the claim, and the language has been modified.” P.J. Frederico, Commentary on the New Patent Act (1952).  In 2011, the statute was renumbered so that Sections 112¶1 and 112¶2. are now Sections 112(a) and 112(b).

The newest Supreme Court case on point is Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014).  In Nautilus, the court explained that claims must provide reasonable certainty as to the claim scope:

[W]e read § 112, ¶ 2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.

Id. Previously, the Federal Circuit had invalidated claims on definiteness only when claims are unable to be construed are “insolubly ambiguous.”  The Supreme Court found that standard allowed claims that “lack the precision § 112, ¶ 2 demands.”

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The claims here all generally relate to producing an overlay of logo icons and small window-in-window content on a TV screen.  All of the claims include the phrases “overlay activation criterion” or “overlay activation signal.”   One problem here is that the those terms were not found in the original disclosure but rather added during prosecution.  A second problem is that neither of these have any ordinary meaning to one skilled in the art (even though each word is individually  known, the combination is not known to PHOSITA).  A third problem is that the different patents appear to use the terms in slightly different ways — even though all have the same original specification. The court indicated that it was unclear whether the signal/criterion was focused on the icon-overlay or on the content-overlay or on both.

Here, a person of ordinary skill would encounter two claim phrases without an ordinary meaning in the art. Upon consulting the specification, he or she would not find those phrases.  And when attempting to glean their meaning from the patent’s use of “activates” and “activating,” he or she would find that “the patents teach two different results”—i.e., display of IP content associated with an already displayed overlay versus display of an overlay in the first place—without reasonable certainty as to which reading is correct. The asserted ’339, ’945, and ’621 patent claims are therefore indefinite.

Slip Op. Note here that the court’s ruling could have gleaned further definitional information from the claims that state expressly that the “overlay activation criterion” is used “to cause the display screen to display the overlays” and that the “overlay activation signal” is used to “generat[e] display drive signals causing the
TV screen to display the overlays.”

The other two patents provided more specific description of the terms within the claims, but also expressed what the court called intra-patent inconsistencies (within the patent).  The particularly inconsistency was the source of the activation criteria — was it from the internet or from the user’s devices.

On the one hand, the independent claims indicate that an “overlay activation criterion” is … provided “over the Internet” and “transmitted to the user’s premises.” But the dependent claims, on the other hand, state that “said overlay activation criterion includes . . . a user command information,” indicating that an “overlay activation criterion” can come from a user’s premises via the remote control. Comparing ’220 patent claims 1 and 9

Slip Op.  According to the court, this internal inconsistency further sealed the deal. Invalidity Affirmed.   I would note that the proffered inconsistency appears easily reconcilable in that the “activation criterion” and “user command” can come from two different sources.  But, that is a distinction I had to guess at and create in my head ex post — not something offered by the patent documents.

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Invalid.