Patent Case Summaries February 2, 2022

Patent Case Summaries | Week Ending January 28, 2022

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Nature Simulation Systems Inc. v. Autodesk, Inc., No. 2020-2257 (Fed. Cir. (N.D. Cal.) Jan. 27, 2022). Opinion by Newman, joined by Lourie. Dissenting opinion by Dyk.

NSS sued Autodesk for infringement of two patents related to methods of packaging computer-aided data for three-dimensional objects. The district court held a claim construction hearing and ruled that the asserted claims are invalid for indefiniteness under 35 U.S.C. § 112(b). The court premised its ruling on the notion that a claim term is indefinite, as a matter of law, if there are any “unanswered questions” about the term. NSS appealed.

The Federal Circuit reversed, concluding “that the district court erred on the legal standard for claim indefiniteness, and that on the correct standard the claims are not indefinite.” The Federal Circuit summarized key aspects of the statute and the Supreme Court’s Nautilus decision, explaining that the claims “must provide reasonable certainty in defining what is patented” when “viewed and understood in the context of the specification and the prosecution history.” The district court erred by applying an incorrect “unanswered questions” test for indefiniteness.

The Federal Circuit additionally faulted the district court’s analysis. The court had “declined to consider information in the specification that was not included in the claims” and gave “no weight to the prosecution history showing the resolution of indefiniteness by [the examiner’s] adding [certain] designated technologic limitations to the claims.” The district court did not even address the examiner’s amendment. The Federal Circuit, by comparison, emphasized that “actions 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 thus reversed, holding that indefiniteness was not established as a matter of law.

Judge Dyk dissented because, in his view, “the asserted claims are invalid because they are indefinite.” He explained that “the fact that a patent examiner introduced the indefinite language does not absolve the claims from the requirements of 35 U.S.C. § 112.” Additionally, Judge Dyk disagreed that the district court had applied an incorrect “unanswered questions” standard, stating that this was “not the district court’s decision.” Instead, the district court, “in a detailed and thorough analysis,” read the 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.”

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