In the years since the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13‑369, when has the District Court for the Eastern District of Texas found patent claim terms indefinite? The primary determinant appears to be whether the specification, prosecution history, and/or claims themselves say anything about the potentially-indefinite term. If any explanation can be found, the term is usually deemed not indefinite and is often construed accordingly. Extrinsic evidence, including the opinions of experts, is rarely addressed in detail. The following examples are illustrative.
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Tinnus Enterprises, LLC v. Telebrands Corp., Case No. 6:15-CV-551-RWS-JDL, Dkt. No. 182 (Apr. 28, 2016) (Love, J.), objections overruled, Dkt. No. 199 (Jun. 7, 2016) (Schroeder, J.)
The Court found that the term “substantially filled” was not indefinite and did not require construction. The Court noted that “while the specification indicates a subjective determination for filling the containers, the claim itself provides objective bounds and ascertainable meaning for the term ‘substantially filled.’” “By the plain language of the claim, the container being substantially filled is directly related to the ability to shake and detach the claimed containers.” Specifically, “[b]ased on the plain language of the claim, there is a definitive point at which there would not be enough water to overcome the connecting force by shaking, and likewise, a point at which there would be too much water such that the containers would detach without shaking, thereby not practicing the claim.”
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Vstream Techs., LLC v. PLR Holdings, LLC, Case No. 6:15-CV-974-JRG-JDL, Dkt. No. 175 (Sept. 27, 2016) (Love, J.), adopted, Dkt. No. 192 (Oct. 24, 2016) (Gilstrap, J.)
The Court found that the term “sufficiently correct” was indefinite. The Court noted that “[t]he term ‘sufficiently correct’ appears in the claims and Abstract of the ’824 Patent, but does not appear anywhere else in the ’824 Patent specification.” The Court reasoned that “[w]hether a decoding operation is sufficiently correct could presumably differ depending on the subjective preferences of the individual designing the decompression program. For example, an individual might find that an output that is 50% correct is ‘sufficiently correct,’ while another individual might find that an output must be 75% [correct] to be ‘sufficiently correct.’” Indeed, “Plaintiff’s own expert opined that whether an output is ‘sufficiently correct’ ‘depends on how the designer defines ‘sufficiently correct’ for their particular application.’ In other words, the subjective decision of the individual designer determines what is ‘sufficiently correct.’ This testimony bolsters the conclusion that this term is indefinite.”
Next, the Court found that the phrase “if it is determined that the recommendation should be accepted” was not indefinite and construed it to mean “if it is determined that there is sufficient space for the suggested output.” The Court noted that “the parameters that a person of ordinary skill practicing the invention would use to determine if the recommendation should be accepted are, in fact, included in the specification. … [Specifically,] the specification states that whether the recommendation is accepted turns on whether there is sufficient space available for the first output data coefficients.” Thus, “[t]he limitation does not require an evaluation of subjective criteria, but rather simply requires a determination of whether a recommendation should be accepted or rejected.” But, “[b]ecause the specification references a recommendation only with respect to sufficient space, this term is properly limited to encompass whether there is sufficient space for the suggested output.”
Similarly, the Court found that the phrase “based upon which pipeline is more suitable for processing the component” was not indefinite and construed it to mean “based on which pipeline is more efficient at processing the component.” The Court noted that “[t]he specification indicates that whether a pipeline is ‘best suited’ is the same as whether that pipeline is ‘most efficient.’” Hence, “[d]irecting data into one of the pipelines ‘based on which pipeline is more suitable’ is akin to directing the data in the most efficient way in order to exploit any differences between the two pipelines.”
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GeoDynamics, Inc. v. DynaEnergetics US, Inc., Case No. 2:15-CV-1546-RSP, Dkt. No. 83 (Oct. 25, 2016) (Payne, J.)
The Court found that the phrase “without changing the pressure condition of the wellbore to a more underbalanced condition after the step of positioning” was not indefinite and construed it to mean “without changing the pressure condition of the wellbore to a more underbalanced condition after the step of positioning during perforation.” The Court noted that “the intrinsic record indicates that ‘after’ means ‘after’ the step of positioning and during perforation. Indeed, the specification discusses the advantages of not changing the pressure condition during perforation.” “Moreover, the specification describes the general timeframe at issue using the term ‘after.’ Specifically, the specification states that ‘after perforation, fluid flows from the formation through the tunnels.’” “In addition, the claim language itself recites the relevant timeframe for step (c) of the claims as the time during the perforation operation.”
Similarly, the Court found that the phrase “eliminating a substantial portion of said/the crushed zone” was not indefinite and construed it to mean “substantially eliminates the zone of reduced permeability (disturbed rock) around the perforation tunnel.” The Court noted that “[t]he specification [] states that ‘as shown in FIG. 5b, following the secondary explosion, the crushed zone 26 is substantially eliminated and a fracture 30 is formed at the end (or tip) of the tunnel. Accordingly, the Court finds that a person of ordinary skill in the art would understand that ‘eliminating a substantial portion of the crushed’ means that the crushed zone is ‘substantially eliminated.’” Further, “[t]he specification states that ‘the compaction of particulate debris into the surrounding pore throats results in a zone of reduced permeability (disturbed rock) around the perforation commonly known as the ‘crushed zone.’’ Accordingly, the Court construes ‘crushed zone’ to mean ‘the zone of reduced permeability (disturbed rock) around the perforation tunnel.’”
Finally, the Court found that the phrase “substantially equal to the total depth of penetration/(the tunnel)” was indefinite. The Court noted “[t]he specification does not indicate when the clear tunnel depth is no longer ‘substantially equal’ to the total depth of the tunnel. Instead, the patent specification only refers to the relationship between the ‘tunnel depth’ and the ‘depth of penetration’ two times, and in both instances, the two are said to be ‘equal,’ not ‘substantially equal.’ … Thus, a person of ordinary skill in the art would not be informed, with reasonable certainty, about when the clear tunnel depth is no longer ‘substantially equal’ to the total depth of the tunnel.”
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