In IQASR vs Wendt, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court”™s decision to invalidated US Patent. No. 9, 132, 432 due to indefiniteness. At issue in the case was the term “magnetic fuzz”.
U.S. Patent 9,132,432 (”˜432 patent) is directed to a process for automobile scrap recycling. Claim 1 is reproduced below:
A method of separation of automobile shredder residue comprising the steps of:
providing automobile shredder residue as a result form a ferrous sorting recovery system;
introducing said automobile shredder residue into an auto mobile shredder residue sorting, non-ferrous recovery system;
non-magnetically sorting magnetic fuzz from said automobile shredder residue with said automobile shredder residue sorting, non-ferrous recover system;
wherein said sorted magnetic fuzz is substantially free of recyclable materials.
In Biosig Instruments, Inc. v. Nautilus, Inc. the Court of Appeals for the Federal Circuit stated that “in the face of an allegation of indefinites, general principles of claim construction apply”. Applying these general principles, the district court found that the term magnetic fuzz in the ”˜432 patent had no ordinary and customary meaning. As such, the district court held that the term “magnetic fuzz” was a coined term.
Having established “magnetic fuzz” as a coined term, the district court relied on intrinsic evidence, (i.e. claim language, the specification, and the prosecution history) and extrinsic evidence (i.e. expert witnesses) to attempt to assign meaning for magnetic fuzz.
In analyzing the intrinsic evidence of the ”˜432 patent, the district court found that “magnetic fuzz” was not clearly defined and not enough of an explanation was given so that an artisan could infer with reasonable certainty objective boundaries for the term. The district court also weighed extrinsic evidence to determine a definition for magnetic fuzz.
The Federal Circuit found that the specification of the ”˜432 patent included open-ended definition for magnetic fuzz and this prevented a reasonable bound on the scope the term. Also, in view of the intrinsic evidence, the Federal Circuit agreed with the district court that extrinsic evidence by itself cannot deem a claim definite. In fact, the Federal Circuit stated that “ a claim term does not become reasonably certain simply because a skilled artisan, when pressed, managed to articulate a definition for it”. As such, the Federal Circuit affirmed the district court”™s decision to invalidate the ”˜432 patent.
The Federal Circuit”™s decision serves as reminder that there are limits to the use of extrinsic evidence to cure indefiniteness and that a poorly written specification cannot simply be saved by an expert witness. A patent application must be drafted to define claims terms such that that a person of ordinary skill can clearly understand the claim scope with reasonable certainty. The court will look at the claim language, specification, and prosecution history to determine the scope of claim terms.