Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Nature Simulation Systems Inc., v. Autodesk, Inc., No. 2020-2257 (January 27, 2022), reversing the district court’s decision of invalidity on the grounds of indefiniteness.
Nature Simulation Systems (NSS) sued Autodesk for infringement of two patents directed to computer algorithms for building 3D geometric models. The district court held a Markman hearing to construe the claims. Claim construction is a matter of law. The district court ruled after claim construction that two claim terms were indefinite and the claims invalid because there were “unanswered questions” about the terms. Citing Autodesk’s expert, the district court concluded that, even if the questions were answered in the specification, the claims were invalid if the questions were not answered in the claims. NSS appealed.
The Federal Circuit reversed on the grounds that the district court’s “unanswered questions” standard is the wrong indefiniteness standard. Citing 35 U.S.C. § 112, Ariad, Nautilus, and Phillips, the CAFC stated that the district court failed to construe the claims, review the intrinsic and extrinsic evidence, or resolve the meaning and scope of the claims. The Court then walked through the specification, prosecution history, and prior art. In analyzing the specification, the Court said “the function of the claims is not to duplicate the specification” but to (a) distinguish the prior art and (b) define the scope of protection. In reviewing the prosecution history, the Court found it significant that the patent claims had been amended to address an indefiniteness rejection and the rejection was withdrawn, stating, “[a]ctions by PTO examiners are entitled to appropriate deference . . .” Finally, the Court noted that the claimed invention represented an improvement over well-established prior art methods that were referenced in the patent. The well-established nature of the prior art supported the definiteness of the claims.
Judge Dyk dissented. Though the patent examiner introduced the disputed claim language, Judge Dyk noted that: (1) the claims must meet the requirements of 35 U.S.C. § 112, even if they are submitted by an examiner; (2) the claim terms at issue did not have an ordinary and customary meaning; and (3) the definition of the claim term was inconsistent with the claim language itself and not sufficiently defined in the specification.