Federal Judiciary

Claims construction opinion; indefiniteness argument rejected

By Michael Smith

Mass Engineered Design, Inc. v. Ergotron, Inc., 2008 WL 695900(E.D.Tex. Mar 13, 2008) (NO. 206 CV 272)
Judge: Leonard Davis
Holding: Claims construction opinion; Defendants' Motion for Summary Judgment for Failure to Comply with 35 U.S.C. § 112 DENIED
Interesting case involving patents dealing with the mounting of multiple displays to increase a computer user's potential viewing area. Both patents' technologies focus on expanding the potential viewing area while minimizing the desk space used, and teach various ways to mount multiple displays so the user can conveniently position them during use.
In the course of construing the claims in his Markman opinion, Judge Davis dealt with Defendants' contention that the term ?desired degree? in the phrase "[a]ngled toward each other to a desired degree & [a]ngles relative to each other to a desired degree" is indefinite.  "A claim is invalid under 35 U.S.C. § 112, ¶ 2 if it fails to particularly point out and distinctly claim the subject matter that the applicant regards as the invention," Judge Davis wrote.  "The party seeking to invalidate a claim as indefinite under 35 U.S.C. § 112, ¶ 2 must show by clear and convincing evidence that one skilled in the art would not understand the scope of the claim when read in light of the specification.  Close questions of indefiniteness in litigation involving issued patents are properly resolved in favor of the patentee. Defendants fail to meet this high burden."  (Internal citations & quotation marks omitted).
Defendants in this case contended that the term ?desired degree? depended solely on the user's subjective opinion, but Judge Davis disagreed, pointing out that the term must be considered in the context of the claim language, and that here the context helps to suggest a meaningful definition for desired degree.  "Although ?desired degree? requires foreknowledge on the part of the user," he concluded, "the resulting adjustment is objectively verifiable. The term ?degree? is used in a mathematical sense; thus, it is confined to a lower limit of zero degrees and an upper limit of 360 degrees. Due to the mathematical nature, the resulting adjustment can be verified. Therefore, the term is not indefinite, and the Court DENIES Defendants' Motion for Summary Judgment."

Full post as published by Eastern District of Texas Federal Court Practice on March 21, 2008 (boomark / email).